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(Message started by: AnnaB on Dec 5th, 2007, 11:14am)

Title: Traverse or not to traverse
Post by AnnaB on Dec 5th, 2007, 11:14am
Quick question.

If I do not traverse a restriction requirement, have I lost the right to rejoin non-elected claims later?

Also, with the upheaval of the new rules, should I be traversing anyway?  Any hidden ramifications there?

Title: Re: Traverse or not to traverse
Post by Isaac on Dec 5th, 2007, 12:23pm

on 12/05/07 at 11:14:33, AnnaB wrote:
Quick question.

If I do not traverse a restriction requirement, have I lost the right to rejoin non-elected claims later?


No.


Quote:
Also, with the upheaval of the new rules, should I be traversing anyway? Any hidden ramifications there?


I don't think there's a general answer to this question.

Under the current rules, traversing might conceivably save you money.  OTOH if you have to make remarks that disparage any distinctions between the groups of claims in order to traverse, those arguments may be used as admissions against you in prosecution or when enforcing the claims even if your traversal is unsuccessful.  

Many clients don't want to traverse using arguments that affect claim scope.   I wouldn't expect those clients to change their policy in view of the new rules.


Under the new rules, accepting a restriction may provide the opportunity to pursue some of the claims in divisional applications rather than in continuations, but it's pretty difficult to know whether the PTO will be able to implement those the portions of the rules that artificially distinguish between continuations and divisionals.

Your claims may present particular problems that we cannot discuss here, but I suspect that for most, the uncertainty of what will  be in the new rules makes them not worth worrying about for now.


Title: Re: Traverse or not to traverse
Post by biopico on Dec 5th, 2007, 9:21pm

on 12/05/07 at 11:14:33, AnnaB wrote:
Quick question.

If I do not traverse a restriction requirement, have I lost the right to rejoin non-elected claims later?


No, but you must traverse to preserve right of petition to the Director to review the requirement.  

Title: Re: Traverse or not to traverse
Post by pentazole on Dec 6th, 2007, 10:06am
Unless traversing a restriction will affect you negatively, you should always traverse it, but not necessarily argue it.  You can just say that you traverse it and provisionally elect something.  The examiner will make it final nonetheless especially since you didn't argue it, but at least for the record you traversed it.

Title: Re: Traverse or not to traverse
Post by TataBoxInhibitor on Dec 12th, 2007, 2:28pm
I have not had this for sometime, but you can always traverse, and elect, then withdraw the remainder, DONT CANCEL, which gives you the option to rejoin later.


Regards,


Title: Re: Traverse or not to traverse
Post by Cleanville on Dec 14th, 2007, 2:47pm

on 12/12/07 at 14:28:24, TataBoxInhibitor wrote:
. . . then withdraw the remainder, DONT CANCEL, which gives you the option to rejoin later. . . .


what happens different if you cancel?

Title: Re: Traverse or not to traverse
Post by DJoshEsq on Dec 14th, 2007, 3:12pm
WOW, these answers are all over the board. One person said always to traverse but don't argue, one said don't taverse because you will affect claim scope and...

Whether to traverse or not - I think that is a simple question.

If the restriction is proper, don't traverse. If it is improper, traverse with reasons why it is improper.

Saying that you traverse without providing argument is ignorant, in my opinion. If it is improper, tell the Examiner why it is improper. I would say that 80-90% of the restrictions that I have received lately are improper.

Title: Re: Traverse or not to traverse
Post by Isaac on Dec 14th, 2007, 6:07pm

on 12/14/07 at 15:12:56, DJoshEsq wrote:
one said don't taverse because you will affect claim scope and...


That's not at all what I said.





Title: Re: Traverse or not to traverse
Post by pentazole on Dec 21st, 2007, 5:18am

on 12/14/07 at 15:12:56, DJoshEsq wrote:
One person said always to traverse but don't argue.


That's not what I said either.



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