[Patentpractice] Species restriction

[Malashaan Kind]

These types of species election are pretty common in life sciences cases. If you get a generic claim allowed, there's an easy case for rejoinder. Functionally you can ague it the same way you would as if the dependent claim was split out into several claims in the way you illustrated in your example.

Malashaan Kind (they/them;she/her)
Fenwick | Associate | +1 650-335-7686 | mkind at fenwick.com<mailto:>

From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Richard Straussman via Patentpractice
Sent: Tuesday, June 10, 2025 9:40 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Richard Straussman <rstraussman at weitzmanip.com>
Subject: [Patentpractice] Species restriction

** EXTERNAL EMAIL **
All,

    Looking for some guidance.  Is it proper for an examiner to issue a species restriction where all of the supposedly different species are present in the same dependent claim (as opposed to separate dependent claims)?

    For example, if claim 1 recites a "writing implement" and claim 2 says, "the system of claim 1, wherein the writing implement is one of a pencil or a ball point pen"?    I am used to the type of species restriction issued involving , for example, claim 2 stating "the system of claim 1, wherein the writing implement is a pencil" and claim 3 stating "the system of claim 1, wherein the writing implement is a ball point pen."

    NOTE:  I am not concerned with the propriety of such restrictions or the arguments that can be made against them (thank you David for your repeated guidance to the group on those points), only the specific situation where the supposed different species are all recited in the same claim.

    Thanks in advance!

        Rich
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