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   Form of Responding - need help
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William Why
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Form of Responding - need help
« on: Sep 1st, 2006, 9:52am »
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I am responding to a restriction requirement that I do not agree with, and I was wondering what headings go into a response to this requirement.  I know that for office actions, it is generally,  instruction first page, amendments, remarks, conclusion type, what about for a rrestriction?
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William Why
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Re: Form of Responding - need help
« Reply #1 on: Sep 1st, 2006, 10:03am »
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I want to also add that this is a design application.   If that makes a difference.
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TataBoxInhibitor
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Re: Form of Responding - need help
« Reply #2 on: Sep 1st, 2006, 10:39am »
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Look into the response.   The Examiner has probably asked you to make an election because the Examiner things the embodiments are patently distinct or non-obvious variants of each other.  You need to counter this by supplying some evidence that the embodiments are not patently distinct, but make sure you elect an embodiment for prosecution on the merits and along with that, your response will be with traverse, as oposed to without traverse.
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TataBoxInhibitor
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Re: Form of Responding - need help
« Reply #3 on: Sep 1st, 2006, 10:57am »
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I basically just have a remarks section.
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Isaac
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Re: Form of Responding - need help
« Reply #4 on: Sep 1st, 2006, 12:03pm »
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on Sep 1st, 2006, 10:39am, TataBoxInhibitor wrote:
Look into the response.   The Examiner has probably asked you to make an election because the Examiner things the embodiments are patently distinct or non-obvious variants of each other.  You need to counter this by supplying some evidence that the embodiments are not patently distinct, but make sure you elect an embodiment for prosecution on the merits and along with that, your response will be with traverse, as oposed to without traverse.

 
If your argument is that the Examiner is wrong about  the identified groups of inventions being patentably distinct, you might well be best served by electing without traversal.   You really cannot effectively respond to the argument without arguing away claim scope.
 
If the Examiner has failed meet the criteria for restriction by doing something like not identifying generic claims, not providing a rationale for why examination of the claims is an undue burden, then traversal is more likley be a reasonable choice.
 
I'll also note that there are plenty of anecdotes around that suggest that arguments over even weakest of restriction requirements won't be successful.
 
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Isaac
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