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[mattthew]

The examiner restricted based on my drawings, never looking at the claims.

I just got a restriction requirement on a storage system (doesn't give anything away) with a variety of examples in the drawings.  They show different placement, method of construction, and variations in the item being stored.

This is a continuation in part from an earlier issued patent which was given a restriction requirement between a non-storage species I then elected and this species.  I added new matter going with a CIP instead of a divisional.

I got a restriction requirement which listed almost half as many species as I had drawings.  Drawings which showed the previous drawing with an added limitation where divided up.  All of the old matter from the original application was even divided up into species even though I'm not claiming them now (which is why it seems the claims weren't read).

My Question:  I want to argue that a larger grouping of drawings have a generic claim.  Can/should I call the examiner to ask if I can submit an argument for the re-division of species.  I'm not really sure what the possible advantages and liabilities of this situation are.  I've been through two other elections with other patents and I'd always thought they were supposed to be claim based and not drawing based.

[af]

The examiner restricted based on my drawings, never looking at the claims.

I just got a restriction requirement on a storage system (doesn't give anything away) with a variety of examples in the drawings.  They show different placement, method of construction, and variations in the item being stored.

This is a continuation in part from an earlier issued patent which was given a restriction requirement between a non-storage species I then elected and this species.  I added new matter going with a CIP instead of a divisional.

I got a restriction requirement which listed almost half as many species as I had drawings.  Drawings which showed the previous drawing with an added limitation where divided up.  All of the old matter from the original application was even divided up into species even though I'm not claiming them now (which is why it seems the claims weren't read).

My Question:  I want to argue that a larger grouping of drawings have a generic claim.  Can/should I call the examiner to ask if I can submit an argument for the re-division of species.  I'm not really sure what the possible advantages and liabilities of this situation are.  I've been through two other elections with other patents and I'd always thought they were supposed to be claim based and not drawing based.

I don't really have an answer for you, but I am facing a similar situation where the examiner identified drawings as patentability discrete groups of species and asking me to choose claims (without identifying an claims) to fall into one group. The only suggestion I have for you is possibly argue that your claims encompass all of the drawings. 

Maybe one of the more seasoned members of this forum can give a better answer.

As a side note, I don't really understand the statutory basis of a restriction based on drawings instead of claims. 35 U.S.C. §121 speaks of "distinct inventions being claimed". How can such a restriction be valid?

[smgsmc]

The examiner restricted based on my drawings, never looking at the claims.

I just got a restriction requirement on a storage system (doesn't give anything away) with a variety of examples in the drawings.  They show different placement, method of construction, and variations in the item being stored.

This is a continuation in part from an earlier issued patent which was given a restriction requirement between a non-storage species I then elected and this species.  I added new matter going with a CIP instead of a divisional.

I got a restriction requirement which listed almost half as many species as I had drawings.  Drawings which showed the previous drawing with an added limitation where divided up.  All of the old matter from the original application was even divided up into species even though I'm not claiming them now (which is why it seems the claims weren't read).

My Question:  I want to argue that a larger grouping of drawings have a generic claim.  Can/should I call the examiner to ask if I can submit an argument for the re-division of species.  I'm not really sure what the possible advantages and liabilities of this situation are.  I've been through two other elections with other patents and I'd always thought they were supposed to be claim based and not drawing based.

I've been through this several times.  In one instance, the Examiner was really off the wall.  Each figure or group of figures was declared to be a species:  Species 1:  Fig 1A - 1C; Species 2:  Fig. 2; Species 3:  Fig. 3A - 3H , .... This was absurd because Fig. 1A - 1C showed the architecture of a basic packet-data network for context; and Fig. 7 just showed the basic architecture of a computer for context. Embodiments of the invention were covered in only four sets of figures, anyway, so I could immediately dismiss the other three so-called species.   Somewhere in Chapt 800 of the MPEP there is a basis for this.  Even senior members of my firm are not experienced in it.  I did have a chat with a friendly Examiner who gave me some pointers, and admittted that Chapt 800 is horribly written and should be rewritten entirely.  First of all, I would not argue that two or more species are "patentably indistinct"  .  I've yet to read a clear discussion of what that means, and you could shoot yourself in the foot with respect to future prosecution options.  What I did, on the advice of the Examiner, was first identify the figures that were covered by a particular claim.  For example, Claim 1 covers Fig. 3, 4, and 5 (declared to be three species).  You then argue that "there is no undue burden on the Examiner to search these three species" because he has to search prior art relevant to only one claim ... the proper phrasing should be in the office action.  Of course, this won't work if each claim does in fact cover only one set of figures.  I argue on the basis of sets of figures covered by the independent claims.  Often, specific species are covered by dependent claims.

[af]

I looked through chapter 800 of the MPEP as SMGSMC helpfully suggested. I could not find anything to justify a restriction not based on claims. I know this seems to be common practice for examiners to make this kind of restriction requirement, but is it correct practice? 

What I did find section MPEP 806.01,  "In passing upon questions of double patenting and restriction, it is the claimed subject matter that is considered and such claimed subject matter must be compared in order to determine the question of distinctness or independence. However, a provisional election of a single species may be required where only generic claims are presented and the generic claims recite such a multiplicity of species that an unduly extensive and burdensome search is necessary."

You may find this section helpful - MPEP 806.03, "Where the claims of an application define the same essential characteristics of a single disclosed embodiment of an invention, restriction there between should never be required. This is because the claims are *>not directed to distinct inventions; rather they are different definitions of the same disclosed subject matter, varying in breadth or scope of definition."

Alan

[Jellothighs]

Hope this helps:

809.02(a) Election >of Species< Required [R-3]

Where **>restriction between species is appropriate (see MPEP § 808.01(a))< the examiner should send a letter including only a restriction requirement or place a telephone requirement to restrict (the latter being encouraged). See MPEP § 812.01 for telephone practice in restriction requirements.

Action as follows should be taken:

(A) Identify generic claims or indicate that no generic claims are present. See MPEP § 806.04(d) for definition of a generic claim.

(B) Clearly identify each (or in aggravated cases at least exemplary ones) of the disclosed species, to which claims are >to be< restricted. The species are preferably identified as the species of figures 1, 2, and 3 or the species of examples I, II, and III, respectively. In the absence of distinct figures or examples to identify the several species, the mechanical means, the particular material, or other distinguishing characteristic of the species should be stated for each species identified. If the species cannot be conveniently identified, the claims may be grouped in accordance with the species to which they are restricted. >Provide reasons why the species are independent or distinct.<

(C) Applicant should then be required to elect a single disclosed species under 35 U.S.C. 121, and advised as to the requisites of a complete reply and his or her rights under 37 CFR 1.141.

[smgsmc]

Hope this helps:

809.02(a) Election >of Species< Required [R-3]

Where **>restriction between species is appropriate (see MPEP § 808.01(a))< the examiner should send a letter including only a restriction requirement or place a telephone requirement to restrict (the latter being encouraged). See MPEP § 812.01 for telephone practice in restriction requirements.

Action as follows should be taken:

(A) Identify generic claims or indicate that no generic claims are present. See MPEP § 806.04(d) for definition of a generic claim.

(B) Clearly identify each (or in aggravated cases at least exemplary ones) of the disclosed species, to which claims are >to be< restricted. The species are preferably identified as the species of figures 1, 2, and 3 or the species of examples I, II, and III, respectively. In the absence of distinct figures or examples to identify the several species, the mechanical means, the particular material, or other distinguishing characteristic of the species should be stated for each species identified. If the species cannot be conveniently identified, the claims may be grouped in accordance with the species to which they are restricted. >Provide reasons why the species are independent or distinct.<

(C) Applicant should then be required to elect a single disclosed species under 35 U.S.C. 121, and advised as to the requisites of a complete reply and his or her rights under 37 CFR 1.141.

When I saw your username, I thought for sure your post was going to be spam.  But I was about to post the same citation as you did above. 

[af]

Thanks, but I'm confused. That seems to contradict 806.01. In restriction requirement I received the examiners did not address the claimed subject matter at all except to say that there is no generic claim. He only identifies drawing as being species without any relation to particular claims.  Drawings are not claimed subject matter. It seems to me that 809.02 does not follow the statute which says "If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions."

Am I missing something?

Alan

[Jellothighs]

I'm not an attorney, but I don't understand why you think there is a contraction there. I'm assuming there are claims that are directed to one species but not another.

For example, Fig 1 shows an embodiment with A, B, C, D and Fig 2 shows an embodiment with A, B, C, E. 

Claims read:
1.  A device comprising A, B, C, and broad Z
2.  The device of claim 1 wherein the Z is a D
3.  The device of claim 1 wherein the Z is an E

The examiner is just identifying each species by the figure.  That doesn't mean that there aren't distinct claimed inventions.

From my understanding, distinct inventions are claimed in this example.  Claim 1 is generic since it reads on both embodiments. Claim 2 (embodiment of fig 1) is a distinct claimed invention from claim 2 (embodiment of fig 2).