[Patentpractice] Species restriction

[Patent Lawyer]

So, if you have claims like:

Claim 1 recites "measuring one or more physical properties of a blob...", and
Claim 2 recites "the system of claim 1, wherein physical properties comprise P1, P2, P3, and P4."

The species restriction is on the properties P1, P2, P3, and P4 in claim 2.  The examiner says to pick one of them.
And we elect property P1.

The species election just says that claims 1 and 2 read on the invention.  Right?

We leave claim 2 as it is.  Right?

I.e., after electing P1, we leave claim 2 as is, and it will be examined only to the extent it covers the elected property P1.  Is that correct?

Assuming the disclosure is enabling for each of the properties (P1 … P4), is there a suggested strategy for which one to elect?

(I understand about traversing, but I am trying to be sure about what to do with the claims)


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
Reply-To: Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
Date: Tuesday, June 10, 2025 at 10:06 AM
To: David Boundy <DavidBoundyEsq at gmail.com>, Patentpractice Patentpractice <patentpractice at oppedahl-lists.com>
Cc: Richard Straussman <rstraussman at weitzmanip.com>
Subject: Re: [Patentpractice] Species restriction

Thanks!
Richard Straussman
Senior Counsel
Registered Patent Attorney
Member NY, NJ & CT Bars
. . . . . . . . . . . . . .
Weitzman Law Offices, LLC
Intellectual Property Law
425 Eagle Rock Avenue, Suite 401
Roseland, NJ 07068
direct line 973.403.9943
main 973.403.9940
fax 973.403.9944
e-mail rstraussman at weitzmanip.com<mailto:rstraussman at weitzmanip.com>

http://www.weitzmanip.com<http://www.weitzmanip.com/>



On 6/10/2025 10:01 AM, David Boundy wrote:
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<mailto: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
Senior Counsel
Registered Patent Attorney
Member NY, NJ & CT Bars
. . . . . . . . . . . . . .
Weitzman Law Offices, LLC
Intellectual Property Law
425 Eagle Rock Avenue, Suite 401
Roseland, NJ 07068
direct line 973.403.9943
main 973.403.9940
fax 973.403.9944
e-mail rstraussman at weitzmanip.com<mailto:rstraussman at weitzmanip.com>

http://www.weitzmanip.com<http://www.weitzmanip.com/>



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