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[biotech32]

Hello,

Has anyone ever responded to a restriction requirement by suggesting an alternative restriction to the Examiner?  If so, did you include new suggested classes and subclasses?

In my case, the Examiner has made a three-way restriction requirement.  I agree with the Examiner that Invention III should be split off, but I have good arguments for why I and II should remain together.  I found a (reputable) law firm webinar that suggested proposing an alternative restriction and seeing if the Examiner will go for it.  The webinar did not say anything about whether you had to or should suggest new classes/subclasses. 

I like the idea of suggesting an alternative, but I'm leary of proposing new classes/subclasses if that's not necessary.  Any thoughts would be greatly appreciated.  Thanks!!

[JimIvey]

Has anyone ever responded to a restriction requirement by suggesting an alternative restriction to the Examiner?

I have.  Be sure to include your election from the inventions enumerated by the examiner or the response would be considered non-responsive.

I'm not sure I'd do this again.  I'm concerned there might be unnecessary admissions in doing that.  If and when the issue comes up again, I'll rethink it.

If so, did you include new suggested classes and subclasses?

No.

Regards.

P.S.  In a recent restriction requirement (based on the Figures, not the claims), one invention read on all claims and another read on no claims, so I just elected the one that read on all claims.

[klaviernista]

There are instances where a RR as posed by an Examiner makes no sense.  In those cases, I have occassionally responded by arguing the RR, making an election based on the RR as framed by the Examiner, and suggesting an alternative restriction.

Another way of handling the issue is to file an amendment that cancels claims that would not have been elected and presents claims only to one of the groups identified in the RR.  That effectively renders the RR moot.  I am doing that in a pharma case today, as a matter of fact.

[NJ Patent1]

The only FEW times I've had any success traversing a RR was with 4- or 5-way restricions, arguing that at least G-I and G-II should be searched and examined on the merits because ...{something out of MPEP}.  I've never tried suggesting that the Examiner got the class/sub-class wrong so I can't comment (Petitonable?).  Per Jim's comment, traversal or not, one must make an election (I try to weasle and call it a "provisional" election) to be deemed responsive. 

[biotech32]

Thank you all for the input.  I was thinking of doing something similar to klaviernista's first suggestion: (1) making my required election based on the Examiner's restriction; (2) presenting my arguments for why I think the Examiner's requirement is improper; and (3) proposing my alternative restriction (with an election here, too, should the Examiner find my suggestion agreeable).

As a new-ish patent attorney, I find restriction requirements maddening, and I don't see that improving any time soon.  Many times, the Examiner does not appear to understand the rules (and I'm not sure I do either sometimes), so he or she refuses to budge on anything.

[klaviernista]

As a new-ish patent attorney, I find restriction requirements maddening, and I don't see that improving any time soon.  Many times, the Examiner does not appear to understand the rules (and I'm not sure I do either sometimes), so he or she refuses to budge on anything.

Restrictions are frustrating to a lot of patent attorneys, and they come up a lot on this board.  In fact, I have posted well over 20 times on the subject over the last three years or so.

If you want more info on restrictions and various issues they pose, search the boards for "restriction" in conjunction with my user name (klaviernista), Jim's username (JimIvey) or Karens (khazzah).  Lots of good stuff in those posts.