[Patentpractice] Species restriction

[David Boundy]

 Yes, theoretically this is proper use of election of species (EoS is
common for Markush groups, for instance).

The main constraint is "mutually exclusive."  So to change your hypo
slightly, "wherein the writing instrument produces a black line or has a
six-sided barrel" wouldn't be electable because those two aren't mutually
exclusive.

On Tue, Jun 10, 2025 at 9:39 AM Richard Straussman via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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
>
> --
> *Richard Straussman*
>
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