[Patentpractice] two questions - both relating to restriction requirements

[Rick Neifeld]

"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." - See, also, 37 CFR
1.141(b)(" Where claims to all three categories, product, process of
making, and process of use, are included in a national application, a three
way requirement for restriction can only be made where the process of
making is distinct from the product. If the process of making and the
product are not distinct, the process of using may be joined with the
claims directed to the product and the process of making the product even
though a showing of distinctness between the product and process of using
the product can be made. ")

On Fri, Mar 28, 2025 at 7:08 AM David Boundy via Patentpractice <
patentpractice at oppedahl-lists.com> wrote:

> 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 I noted and was informed that withdrawn method claims are more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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