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[04274108]

Hello,

I received an Office Action today that needs to be resolved by the end of this week.  Any help is greatly appreciated.

The Office Action (OA) states that under 35 USC 121, I have 2 distinct inventions in my application.  The OA has isolated the inventions into 2 claims groups (A and B).

The OA states,


"... because these inventions are distinct and have acquired a separate status in the art because of their recognized divergent subject matter, restriction for examination purposes as indicated is proper.

Applicant is advised that the reply to this requirement to be complete must include an election of the invention to be examined even though the requirement be traversed (37 CFR 1.143)."

If I follow Bitlaw, then I can have the examiner reconsider this request.

http://www.bitlaw.com/source/37cfr/1_143.html

However, I'm willing to NOT have the request re-examined and I want to drop the invention in the group B claims.  

Is there a specific form that I have to file to do this or do I just write a letter and tell the examiner that I elect to have group A examined?  Can I fax the request or does it have to be mailed?

Thanks!

Marcel

[04274108]

Thanks RogersDA!

[Jonathan]

Some practitioners subscribe to the theory to never acquiesce to an Examiner's findings when it is not in favor of an Applicant's interests. That is, various requirements are met and/or routes are undertaken to expedite a Notice of Allowance all the while protesting / disagreeing with an Examiner's requirements or rejections. The purpose of doing so is to not create a record that the Applicant agreed with the Examiner and could therefore be used to interpret what the Applicant regarded as the invention, prior art, etc.

With that in mind, one should not necessarily elect without traverse. Of course the Examiner will most likely not reverse the restriction but at least it will be on the record that you did not agree with the finding of separate inventions.

One other thing to not forget is that you are entitled to filing a divisional application to pursue the non-elected invention.

[Isaac]

OTOH, having it on record that you thought there were not
separate inventions when the inventions end up in separate patents anyways
may not be in your client's best interests.

For that reason, it is often advised not to protest a
restriction requirement on the grounds that the inventions are
not separate.