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[claytoncramer]

I filed my first patent application several years ago.  Now I have received a letter asking me to elect a species.  I have no experience with this sort of thing, but it appears that the patent examiner has made an error.  I've drafted a response, and I would love to hear suggestions.

Examiner, Art Unit 3632
U.S. Patent Office


Dear Ms. Smith:

This is concerning your letter dated January 31, 2011 regarding patent application 11/601,964.  As I understand your letter, your office claims that the application contains multiple inventions that “are independent or distinct because they reveal various embodiments of the mount.”  For this reason, I must elect a specific species of the invention, with the claims associated with that species, for examination to go forward.

I understand that, whether or not I choose to appeal the decision to hold these as distinct species (what I believe is called a “traverse”), I am required to elect a species for this patent application to go forward, including which claims go with the elected species.  For this reason, in response to the Requirement for Restriction, I elect with traverse, the species identified by Figs. 1-5, corresponding to claims 1-4, for examination. 

My traverse argument is that your letter of January 31, 2011 is incorrect in that it states that I must elect a specific species because multiple inventions “are independent or distinct.” [emphasis added]  As specified in MPEP § 802, 35 USC 121, and 37 CFR 1.142 the requirement for restriction applies “If two or more independent and distinct inventions are claimed in a single application…” [emphasis added]

By the definition of “related but distinct” in MPEP § 802.01(II), the three species contained in Figs. 1-5, 6-11, and 12-14 are not “independent and distinct.”  They are actually “related but distinct.”  I make this argument based on the definition of “related but distinct”: “Two or more inventions are related (i.e., not independent) if they are disclosed as connected in at least one of design (e.g., structure or method of manufacture), operation (e.g., function or method of use), or effect.”  The three embodiments in Figs. 1-5, 6-11, and 12-14 are therefore related because they are “connected” in “design,” in “operation,” and in “effect.”

In Design

Figs. 1-5, 6-11, and 12-14 all use a retaining pin that goes axially or chordally perpendicular to the direction of movement of the counterweight on the counterweight shaft.  The only difference in these three species is whether the retaining pin goes into the counterweight shaft itself, or into one of two different extensions to the counterweight shaft, depending on whether the counterweight shaft holds the existing counterweight retention device with a threaded hole or a threaded stud. 

In Operation

Once the counterweight shaft extension is installed, the invention operates identically in all three embodiments: the user removes the retaining pin to allow removal or installation of the counterweight.  It thus meets the “operation” requirement.

In Effect

All three embodiments work in exactly the same way—using the strength of the retaining pin to prevent a counterweight from sliding off the end of the counterweight shaft.  All three embodiments have the same effect.

If necessary, claim 1 could be corrected to:

1.   A counterweight retention safety device for a German equatorial telescope mount, comprising a retaining pin passing through a diametric or chordal through-hole in the counterweight shaft or attached extension of the counterweight shaft of said mount, with said retaining pin having sufficient length to extend beyond the diameter of the counterweight shaft, where said retaining pin functions as a stop to arrest the axial movement of counterweights along said counterweight shaft.

Please let me know what steps I need to take next.


Very Truly Yours,



Clayton E. Cramer

[MYK]

Wha . . . Clayton E. Cramer, author of "By the Dim and Flaring Lamps"?  Noted history scholar and nemesis of fraudsters?  On *my* forum?  OMGI'msuchafancanIhaveyourautograph?!!?!!!!  *faints*

I hope you haven't filed that yet.  Generally speaking, you really don't want to talk about claim amendments unless you have to, and you don't have to when you're just responding to a restriction requirement.  It's just TMI at this time.  You're not trying to overcome prior art or correct the claim language or fix a typo.  You're ONLY arguing against the restriction requirement, not against a rejection of your claims.

Also, you shouldn't be posting such details in a public forum.  Although right now you're not in a litigation situation, where every word you write might be used against you in court, patents are, after all, something that you might be suing someone over for infringement some day.

[klaviernista]

Mr. Cramer:

See my reply re: responding to restrictions and specieis elections in the following thread.

http://www.intelproplaw.com/ip_forum/index.php/topic,15673.msg79252.html#msg79252

Good day, and good luck.

klav

[Isaac]

“If two or more independent and distinct inventions are claimed in a single application…”

The "and" versus "or" argument is a definite loser.   The argument is thoroughly trashed somewhere in section 800 of the MPEP.  Don't use it.  Be careful about trashing the scope of your own claims by arguing their scope in response to a requirement for restriction.

[JimIvey]

The "and" versus "or" argument is a definite loser.   

It shouldn't be, but it is.

Years ago, there was an invitation for suggestions from applicants and registered practitioners for revision of the restriction. 

The Office actually acknowledged a suggestion to interpret "and" in the law as "and" rather than "or."  Yes, they actually said something to that direct effect, and then followed it will a polite declining of doing so.  Apparently, the law works better when you read "and" as "or" and so the USPTO has explicitly stated that it has done so and will continue to do so.

Hmmm....  That gives me an idea.  Given the looseness of language of the USPTO, I think I can read "rejected" as "allowed" and "unpatentable" as "patentable" in Office Actions coming from the USPTO.  Things would certainly work better if I did.

Seriously, as instrumental the distinction between "and" and "or" is in patent claims, I find the inability to follow the express use of "and" especially troubling.

This is just one of those examples of unfairness of the USPTO for which there is no meaningful recourse.  Oh well....

Regards.

[claytoncramer]

Wha . . . Clayton E. Cramer, author of "By the Dim and Flaring Lamps"?  Noted history scholar and nemesis of fraudsters?  On *my* forum?  OMGI'msuchafancanIhaveyourautograph?!!?!!!!  *faints*

Yes, one and the same.  Specialization is for insects.

Thank you all for the useful advice.  I had no idea that the Patent Office uses "and" in the sense of "or."  Let us hope that they don't use "existing" in the sense of "non-existent" or some equally useful Humpty-Dumptyism.

[claytoncramer]

Mr. Cramer:

See my reply re: responding to restrictions and specieis elections in the following thread.

http://www.intelproplaw.com/ip_forum/index.php/topic,15673.msg79252.html#msg79252

Good day, and good luck.

klav

I read that first, and I gather that you are suggesting that electing a particular embodiment does not preclude the examiner from granting the patent for generic claims that apply to all embodiments.  Might it then be better, if I have to elect a particular embodiment for the search, to go ahead and make the proposed change to my claim 1?  With that proposed change, claim 1 is now more generic, and covers three of my four embodiments.

I understand the rest of the comments about how "and" means "or" except when they go out to lunch and have to figure if all of them responsible for the lunch bill, or just one of them.  It appears that rather than ask the Patent Office to follow the clear text of the USC and CFR, it would be better to simply focus on why all three embodiments fit into my amended claim 1?

[Simpletown]

The relevant passage Isaac mentioned.


802.01 Meaning of "Independent" and "Distinct" [R-5]

35 U.S.C. 121 quoted in the preceding section states that the Director may require restriction if two or more "independent and distinct" inventions are claimed in one application. In 37 CFR 1.141, the statement is made that two or more "independent and distinct inventions" may not be claimed in one application.

This raises the question of the inventions as between which the Director may require restriction. This, in turn, depends on the construction of the expression "independent and distinct" inventions.

"Independent", of course, means not dependent>, or unrelated<. If "distinct" means the same thing, then its use in the statute and in the rule is redundant. If "distinct" means something different, then the question arises as to what the difference in meaning between these two words may be. The hearings before the committees of Congress considering the codification of the patent laws indicate that 35 U.S.C. 121: "enacts as law existing practice with respect to division, at the same time introducing a number of changes."

The report on the hearings does not mention as a change that is introduced, the inventions between which the Director may properly require division.

The term "independent" as already pointed out, means not dependent>, or unrelated<. A large number of inventions between which, prior to the 1952 Act, division had been proper, are dependent inventions, such as, for example, combination and a subcombination thereof; as process and apparatus used in the practice of the process; as composition and the process in which the composition is used; as process and the product made by such process, etc. If section 121 of the 1952 Act were intended to direct the Director never to approve division between dependent inventions, the word "independent" would clearly have been used alone. If the Director has authority or discretion to restrict independent inventions only, then restriction would be improper as between dependent inventions, e.g., the examples used for purpose of illustration above. Such was clearly not the intent of Congress. Nothing in the language of the statute and nothing in the hearings of the committees indicate any intent to change the substantive law on this subject. On the contrary, joinder of the term "distinct" with the term "independent", indicates lack of such intent. The law has long been established that dependent inventions (frequently termed related inventions) such as used for illustration above may be properly divided if they are, in fact, "distinct" inventions, even though dependent.

I.    INDEPENDENT

The term "independent" (i.e., **>unrelated<) means that there is no disclosed relationship between the two or more inventions claimed, that is, they are unconnected in design, operation, and effect. For example, a process and an apparatus incapable of being used in practicing the process are independent inventions. See also MPEP § 806.06 and § 808.01.

Seriously, as instrumental the distinction between "and" and "or" is in patent claims, I find the inability to follow the express use of "and" especially troubling.

This is just one of those examples of unfairness of the USPTO for which there is no meaningful recourse.  Oh well....

I would be more annoyed at going all the way to Supreme Court and being the next Dred Scott or such. My favorite case of the misconstruction of what language means is actually by the Supreme Court. Gotta love them making it clear once and for all that legally Tomatoes are vegetables à la Nix v. Hedden. If the Supremes think this way there is no wonder examiners have such fun claim construction. I always think of this case and laugh when people mention things standing up to judicial review. No matter where you go it is still a roll of the dice.

[JimIvey]

I had no idea that the Patent Office uses "and" in the sense of "or."

For what it's worth, I'm not aware of any other context in which they deliberately misinterpret "and" as "or."  But there are a number of instances in which the deliberately misinterpret the law.

You just need to know where those are and pick your battles carefully.

Regards.