[Patentpractice] two questions - both relating to restriction requirements

[David Boundy]

If the method and apparatus claims are "twins" (as is the case in most
computer applications, and as you suggest " the only distinction is that
the system claim includes a memory and a processor "), then the restriction
requirement is in error, and you should traverse.   By separate email, I am
sending you "the big email" I send out from time to time.

There's no "foreseeing" how an examiner may violate the law.

Start by looking at the two search classes.   Almost certainly, one of them
is entirely bogus.  That's a staring point.

On Fri, Mar 28, 2025 at 7:02 AM Allen Richter (allenr--- via Patentpractice
<patentpractice at oppedahl-lists.com> wrote:

> Dear all,
>
>
>
>    1. I noted and was informed that withdrawn method claims are more
>    likely to be rejoined based on allowable system claims, rather than the
>    other way around. If that's accurate, does anyone know why this is the case?
>
>
>
>    2. Some examiners impose a restriction requirement on system and
>    method claims, even though the only distinction is that the system claim
>    includes a memory and a processor.
>
>
>
> Is there anything that would allow one to foresee when a restriction
> requirement is issued in such scenario, and when not?
>
>
>
> Thank you all in advance for your feedback, and wishing you a nice weekend!
>
>
>
> Allen
>
> European, Swiss & Israeli Patent Attorney
>
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