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[smgsmc]

There have been several recent posts concerning election of species requirements.  I've gotten one recently, and I'm not sure what the consequences are.  The Examiner determined the species (5 of them) solely by looking at the figures.  I'm supposed to elect a species and identify the claims for examination.  The problem is that the claims relating to three of the species are the same.  As a simple example, suppose I claim

A table comprising:

a tabletop;
a base;
at least three legs coupled to the tabletop and the base.

The drawings show tabletops that are circular, square, and hexagonal.  The Examiner declares each shape of tabletop to be a different species.  But none of the claims has a claim limitation pertaining to the shape of the tabletop.  Do I traverse by saying, since the same claim set applies to all three species, that there is no undue burden on the Examiner to search all three?  Since I'm still required to make an election, do I just arbitrarily pick one (say circular)?  What's the consequence of the election on claim scope, since the claim has no limitation with respect to shape?  On the first office action on the merits, will I be required to amend the claim to "a circular tabletop"?

Restriction requirements based on claims makes sense, but election of species based on figures has me confused.

[patentatt]

Do I traverse by saying, since the same claim set applies to all three species, that there is no undue burden on the Examiner to search all three?

I have only found a requirement for serious burden if there is a restriction between inventions, and not mere species, although the MPEP is clear that distinct species can also be distinct inventions (without providing any guidance as to when this does, or does not, happen, other than defining generic claims).  The closest the MPEP comes, perhaps, is the discussion of distinct, non-independent species in 808.01(a): "Where there is a relationship disclosed between species, such disclosed relation must be discussed and reasons advanced leading to the conclusion that the disclosed relation does not prevent restriction, in order to establish the propriety of restriction."

Since I'm still required to make an election, do I just arbitrarily pick one (say circular)?

Yes, I would pick an arbitrary one, and assert that all of the claims read on all of the species (if they do).

What's the consequence of the election on claim scope, since the claim has no limitation with respect to shape?

There should be no consequence.  Although restriction requirements limit applications to particular inventions or species, I have never heard of defendants successfully relying on the applicant's election to limit claim scope beyond what it would otherwise be.

On the first office action on the merits, will I be required to amend the claim to "a circular tabletop"?

This is a good question.  MPEP Chap. 800 does not appear to explicitly forbid the examiner from requiring such an amendment.  However, statements like the following:

"Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141." ¶ 8.02 Election of Species; No Species Claim Present

Clearly indicate that, although the applicant must elect a species, a generic claim reading on the species will still be examined.  However, narrower claims drawn to non-elected species will not be examined.

Restriction requirements based on claims makes sense, but election of species based on figures has me confused.

The figures are just a crutch.  They are used to sort of out mutually-exclusive embodiments that are non-obvious relative to each other.

[Isaac]

The drawings show tabletops that are circular, square, and hexagonal.  The Examiner declares each shape of tabletop to be a different species.  But none of the claims has a claim limitation pertaining to the shape of the tabletop.  Do I traverse by saying, since the same claim set applies to all three species, that there is no undue burden on the Examiner to search all three?

I think the best response would be that the election requirement is improper because all of the claims overlap the three classes.   Alternatively, you can argue that the restriction is improper because all of the claims are generic to all three species groups if the examiner has denied such to be the case.   I don't believe the examiner is required to show a burden for election of species.

  Since I'm still required to make an election, do I just arbitrarily pick one (say circular)?  What's the consequence of the election on claim scope, since the claim has no limitation with respect to shape?  On the first office action on the merits, will I be required to amend the claim to "a circular tabletop"?

No, the examiner cannot force you to amend.   If the species election is maintained, the consequence would be that you won't be allowed to amend to later amend the claims to recite one of the non-elected species.  For example, if you elect circular tabletop, then you cannot later amend the claims to recite a square tabletop.