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[mattthew]

I have a non-final rejection on an accessory to a common tool.

Submitted device and method claims. Got a restriction/election and chose device.  But the examiner stated the device was not limited to the common tool. (tool was only mentioned in the preamble) So I added a few new claims postitively reciting it.

The examiner withdrew my new claims,(non-elected species, that of the device with the tool!!!).  Sited prior art against the device alone based on the short claims to it that remained.  And went on to say it was inherent.  All the while discussing the common tool in reference to the prior art.

One of my new claims accidentally left out an original, and necessary limitation and the examiner said it was proof it was a distinct invention.

The examiner no longer works there, in speaking with the supervisor he indicated if I only added limitations to the examined claims I'd be ok.

My strategy so far is to respond to all the points raised, make my week case for the device alone in argument, but only present new and amended claims that recite the common tool and mounting.  Leaving a take it or leave it option to the examiner.

I'm also pro-se, and will argue that my clerical error on the new claim lacking a limitation was the cause for confusion.

Advice?  Wondering if I should call the supervisor again to confirm since I take it he'll probably call it with the new examiner if he remembers me.

In short the title of my invention, and entire specification only teach one thing and that's all I'm trying to get examined.  My new claims will be longer versions of the old ones that carefully follow the specifciation.

Any assistance would be deeply appreciated.

I will be consulting an attorny on the language of my claims.
I have successfully gotten one patent issued pro-se which is now my livelihood, just couldn't afford to do this one right when filing.

[NJ Patent1]

Matthew:  IMO you actually raise a few intertwined questions here.  You mentioned you will consult a (patent?) attorney on the matter.  He or she should be able to clarify specific issues.  I only offer a few comments in preparation for your meeting. 
Restriction practice is a PAIN.  Period.  End of story.  Just check some of the other threads on this site.  Examiners will do anything to lighten their (admittedly heavy) workload.  There is a difference btw election of invention and election of species for initial search and examination. 
I’m assuming your claim reads something like “A device for guiding a rotating drill bit of bit brace …”.  The word “for” in a preamble is always (often mistakenly) a red flag for Examiners; expresses “statement of intended use”.  Examiners usu take the easy route and ignore the words.  But if the words are necessary to understand the context of what follows (i.e. body of the claim), they should (must) be considered.  What were the Examiner’s reasons for saying ur device was not limited to the common tool?

Formalities excepted, claims, not the title and specification, get “examined”.  Prosecuting pro se may get you some slack.  But the law and regulations will not be broken for you.
 
Usually, a RR or election of species is argued (traversed in patentspeak) by way of Petition.  You may or may not be past that point, depending on what you said in your traversal of the RR or EoS.
 
IMO, claim construction (i.e. is the preamble essential to understanding?) is substantive and appealable after final.  But best you might hope for is reversal and reopening of prosecution.
 
If you don’t drift from the issues and say something to hurt yourself, nothing wrong w/ a telecon. 

[mattthew]

NJ Patent1,

Thank you so much.  Not sure if I can appeal (and do I do that now?).
I said I was electing the species without traverse, didn't comment on the patent examiners mention that the device could be other tools and added the claims making the preamble positive and make those claims tools specific.

The device could be used for other tools so he's right about that.  I thought the preamble which reads "A device for function "A" on tool "B" comprising, ..." mattered.

My guess is I can traverse the "constructive election" the examiner did by withdrawing the new claims.  Since clearly I didn't agree to that without traverse.

Basically my original claims as elected didn't include nearly enough limitations, specifically in relation to the tool it is intended for and on which it must be specifically located.
but I had a means claim that was allowed into the elected species that talks all about the tool in "means" language.  I'm also thinking I can argue that my definition of terms should be read in light of what I taught and not generically. 

If I can get the combination allowed I'm set, it will define over anything.  This is exactly why the initial examiner wouldn't allow it I think.

I'm hoping my out is that my mistake, clerical, was this:
My orginal claims was
A device for"A" comprising a "B", "C" and "D"

I added new: A device for "A" comprising a "B" and "C" mounted on an "A"
I left out "D", it won't work without D, it's necessary and all over the disclosure.

Do I need to do a formal petition with my amendment after this non-final?  Or just argue my traverse in the amendment?

[Simpletown]

If you elected with traverse, most of the time you have left the door open to petition any time before appeal. So if you want to petition this restriction, it would be best to do it now. From what you say it appears that you also should be able to require another non-final (possibly through appeal however) if you don't actually have to amend the claims to over come the art. As long as you go on the record stating that the preamble is limiting, and the examiner's art doesn't cover the preamble (make sure they can't get you on odd claim construction/intended use) then they shouldn't be able to go final. You might still have to appeal to get it back to this stage though. It also depends on what you want to spend in time or money. Appeals can cost more than an RCE and take far longer, depending on the examiners docket versus the boards. If you aren't after final, there is a lot left you can do. You still have a final (proper or improper as the case may be) and an after final to get the claims allowed, along with an appeal. Seems like a petition might get you the farthest at this point. However you need to remember that the petition doesn't stop the clock for response deadlines.

[mattthew]

Thank you Simpletown,

I elected "without traverse" (for some reason I thought I kept reading that Traverse was just a waste of time and thought the traverse was between Method/Device)

I am getting a new examiner so maybe I should just ask the supervisor if I need to appeal?
I spoke with him briefly and thought he said I should argue against it so I thought taking it up in the amendment would be fine.  I sort of got the feeling he was pulling for me.

So I have no issue with stating on the record that the preamble is a limiting factor, should I do that in the amendment as I present only claims to the combination?

I'm guessing if they won't accept my combination claims I'll get 30 days to resubmit claims to the "elected" non-combo I hope not to be stuck with?

Matthew

[NJ Patent1]

Matthew:  First I need to keep things straight in my head; restriction between inventions (e.g. device and method) vs an election of species.  Once you elect an invention, you are stuck w/ the invention (device) you elected at least until you get a claim allowable.  At that point, “rejoinder” of a non-elected invention may be possible.  You elected w/o traverse and you suggested restriction may have been proper, so rejoinder is unlikely (n.b I rarely fight a RR very hard and rarely win when I do). 

If a claim recites, e.g., “a tool selected from the group consisting of a screwdriver, a drill, an awl etc.”, applicant may be required to “elect” one tool for initial search and examination on the merits.  If all goes well, the Examiner is supposed to examine a “reasonable number” of additional species.

As I understand the situation, you had what you consider limiting language in the preamble, the Examiner gave it no weight (typical), so you tried to put it in the body of the claim.  I’m confused as to why you got a non-elected species rather than non-elected invention (in nature of a combination - subcombination restriction).
 
If the device w/o D is indeed inoperable and you state so, the new Examiner may enter and examine the new claim if further search would not be required.  In any event, per Simpletown, I’d argue that the preamble should have been accorded patentable weight.  Bcs the Office gives claims their “broadest reasonable” interpretation, it’s a tough but not impossible sell.  Unfortunately you may be “stuck”

You can’t appeal until your claims are twice or finally rejected.  You may want to weigh the cost of an appeal against the cost of a continuation application.  Good luck. 

[mattthew]

Thanks NJ Patent 1,

The statement was "the claims read on an invention which is non-elected by original presentation"... "belong to a newly presented combination group".

There wouldn't be additional search required as it's basically a further narrowing of the exact same thing and it's clear the first search was on target.

My fear is that even with an RCE I'll be restricted and will be forced to abandon this round, file a divisional, and lose another 3 years waiting for the invention be be given a fair hearing.  Just because that's the path of least resistance for them in clearing their desk.

I'll argue that the preamble is limiting, and offer just claims to the combination siting my error as being the only cause for the withdrawl last time.  Hope I don't get a 30 day notice to resubmit claims without the combination but if I do I have solid arguments against the prior art for just the device.

So I guess you can't say" A device for part AA of A comprising B and C with C mounted on said AA"  that would be nice.  If I could reference the preamble without positively reciting it.

Thanks,
Matthew