[Patentpractice] Species restriction

Tue Jun 10 17:30:06 UTC 2025

First, measurement of the properties is not mutually exclusive, right?  You
can measure any combination of two, right?  So the election requirement is
improper.   Traverse on that ground.

Second, "reads on" is completely different than "readable on."  Both claims
1 and 2 are "readable on" measuring P1.  You leave the claims alone  If you
elected P1, then a claim that says "measuring at least P2" is *readable on*
P1, because it doesn't exclude the possibility of P1.  A claim that says
"measuring P2 and only P2" is not readable on "measuring P1"

Almost certainly there's one of the groups that all claims are *readable *on
(even though the claim and the elected embodiment have nothing to do with
each other).  If the claim does not *exclude* all possibility, it's *readable
on."*  That's the one to elect -- the one that tactically neuters the
requirement.

You ask "it will be examined only to the extent it covers the elected
property P1. "  Yes and no.  The initial search will be for the elected
species.  If *any* of the claims you designate as "*readable* on" the
species is allowable, then the examiner goes back and searches all species
before issuing the first Action.   So the crucial thing is to be as broad
as you can in designating claims "readable on" the elected species.  If you
do it that way, in the predictable arts, as a practical matter, you can
defeat essentially all election requirements.

On Tue, Jun 10, 2025 at 12:28 PM Patent Lawyer <patentlawyer995 at gmail.com>
wrote:

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