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[BobRoberts]

Thanks Klav.  I appreciate your (and the others) input...

I agree with what you are saying in almost all situations...  After rereviewin again this morning, I think that the situation I have may be an exception.  The current situation in my case is that the method claim includes all of the apparatus claim limitations. 

Under 8.21.02, Election without Traverse, the MPEP (Rev 5, Aug 2006) at Pg 800-64 provides:
"Under these circumstances, when the application is otherwise ready for *>allowance<, the claims to the nonelected invention, *>except for claims directed to< nonelected species >and nonelected inventions eligible for rejoinder<, may be canceled by an examiner’s amendment, and the application passed to issue"

underlining provided

It seems that in my case, the MPEP indicates that my case is one where "non-elected inventions (are) elegible for rejoinder".  The MPEP, at 806.05(h), referring to 821.04, and 821.04(a), where 8.21.04(a) states
" Where restriction was required between independent or distinct products, or between independent or distinct processes, and all claims directed to an elected invention are allowable, any restriction requirement between the elected invention and any nonelected invention that depends from or otherwise requires all the limitations of an allowable claim should be withdrawn."

underlining provided

8.05.05(h), as well as 821.04 don't distinguish between with traverse or without traverse, and 8.21.02 seems to provide an avenue to get to 8.21.04(a).  So I believe that I'm ok (in this particular situation, to seek rejoinder later, as of right) whether the restriction is traversed or not.  "as of right" meaning the correct hoops of making sure the procss claims are amended continually6 when necessary to include the steps of the apparatus.

So in my limited circumstance, I believe that I'm ok NOT traversing at this stage, and still rejoining later, so long as I continue any amendments to the withdrawn/nonelected process claims  to keep them commensurate in scope with the apparatus.  I will stand however to being corrected. 

I'm sure everyone is wondering at this stage why I just don't traverse (as it sounds like I;ve put the time in to do so)...  Well, this is a case I'm handling for a client.  It has been so long since I've dealt with this type of restriction requirement (that seems completly wrong to me), I needed to determine how to handle, and the advantages/disadvantages in how it is handled to properly convey the options/risks to the client.  How the client wants to handle this particular situation is essentially a business decision.  Should they want to handle it with a traverse, it will cost more (as it will take longer to prepare the traverse than without traverse).  So, though I will eat my time for geting up to speed, I won't give away a free traverse either.  And I will take the information learned to the next situation of when this occiurs.

Thanks for any input, or correction if I've missed the boat in thinking that my situation seems to fit into an allowable rejoinder later if apparatus is found allowable.

[NJ Patent1]

BobRoberts:  I don’t think you’ve missed anything.  And thanks for the “refresher course” on the MPEP provisions.  Here goes my late Saturday afternoon reading 800 for the Nth time. “Eating time” - as I’m doing following UR post and re-re-re-reading 800 - is sometime a necessary evil in our business.  Pays-off in long run (literally we hope!).  Thanks for the instigation.
 
So, what to tell the present / a future client in this exact scenario as described, where rejoinder appears to be a potential shoe-in?  In the scenario, as I best understand it, I might say:
 
       “I suggest traversal.  The Rules concerning rejoinder appear ambiguous (may / should language, not shall, Chevron deference, etc …) and the conservative approach would be to traverse (under both the ‘belts-and suspenders’ and ‘move-it-or-maybe-lose-it’ principles).  There will be increased costs if we traverse (= a couple billable hours?).  Alternatively, we can just accept the restriction, not amend clams during prosecution to save attorney fees, and file a divisional at any time during the pendency of the application.  There will be additional costs associated with filing and prosecution of the new (divisional) application, etc.”
 
A prior post of mine may have been misleading.  In cases that are at least colorable, I always file at least a perfunctory traversal, at least because of the (IMO) vagaries of rejoinder.  Only once have I had to petition against the “finality” of the requirement (and won) in the pharma situation I described in a previous post (bcs the Examiner always caves).  I’ve done a whopping total of three petitions on non-pharma ‘apparatus and method’ restrictions.  Lost all three  .  I confess my ignorance wrt what happens to a traversed RR made final and not petitioned.  I've either gotten rejoinder or the client has been satisfied with the composition-of-matter / manufacture claims that cover any use thereof.  Took the money and ran (pharma of course excepted, big stakes, usu less concerned about new filing / prosecution fees as these are swamped by costs of the 505(b)(2) NDA / 505(j) ANDA fees for 2nd indications, routes of administration, dosage forms …)  For less aggressive and less well-heeled clients?  The total cost for a petition could come close to, or exceed, filing fees for a small entity.
 
I confess my ignorance / inexperience again.  Outside of the pharma or any other ‘second use’ context, what is the real added value of process claims when client “owns” the composition / manufacture?  Marketing?  If you can’t get ‘em on the composition / manufacture claims, how do you get ‘em on method claims that incorporate all the composition / manufacture limitations?  Isn’t that why we all instinctively go after the composition / manufacture claims first?  Maybe the value is market specific.

Look at all the digging you’ve done in Chpt. 800, and the comments / suggestions received.  One could easily draft a boilerplate traversal that could be edited - in exercise of professional judgment and not for free - to fit particulars, and pasted in.  Thanks(?) again for the instigation to revisit the subject. 

Best

[BobRoberts]

Thanks NJPatent.  The client did select Traversal, so that became a non-issue.  It was more of whether I was misinterpreting the rules...  I don't think so, and believe your conclusion was the same.  And I do believe that the Ex?-examiner/help desk was incorrect in this situation (though since there will be a traversal, it is a non-issue in this circumstance).

Thanks for all the input...

[BobRoberts]

Update, and question...

Well, the Examiner Rejected the Arguments of the Traversal, and made the Restriction Final (I'm sure everyone is surprised!).
In the Finalizing of the Restriction, the Examiner stated "The Traversal was made on the ground of (and listed a single ground) " when in fact the Traversal was made on 2 separate grounds.  Oh well.  If the client decides to in the future, it can be handled in a petition, or indirectly through rejoinder...

And speaking of Petitioning the Director for Reconsideration of a Final Restriction Requirement...  In this case, I know that the client will not want to petition the Director b/c of costs.  They will however want an estimate of the cost to Petition the Director.  To that end, I seek assistance...

It appears that the Petition fee, is $400 under CFR 1.17(f) as for a decision on a question not provided for. 
Under CFR 1.181 Petition to the Director, 1.181(b):
(b)Any such petition must contain a statement of the facts involved and the point or points to be reviewed and the action requested. Briefs or memoranda, if any, in support thereof should accompany or be embodied in the petition; and where facts are to be proven, the proof in the form of affidavits or declarations (and exhibits, if any) must accompany the petition.

What does one charge (generally) for such a brief in reconsideration of a Final Restriction Requirement (not counting the $400 Petition Fee)?  Is it anywhere close to a Brief for an Appeal of a Final Application Rejection (that starts, where, around $2000 - $2500)?  It would seem considerability less complicated (and this less expensive) in the case of reconsideration of a Restriction Requirement, but just wondering. 

Any input is appreciated!  Thanks!

[klaviernista]

What does one charge (generally) for such a brief in reconsideration of a Final Restriction Requirement (not counting the $400 Petition Fee)?  Is it anywhere close to a Brief for an Appeal of a Final Application Rejection (that starts, where, around $2000 - $2500)?  It would seem considerability less complicated (and this less expensive) in the case of reconsideration of a Restriction Requirement, but just wondering. 

As with appeal briefs, cost really depends on complexity.  If you are talking about a straightforward RR, I might estimate fees correlating to 4-6 hours of my time 9do the math with your billing rate).  For something more complex, I would estimate more, with a cap ~$1.5-2k.

I've filed appeal briefs for $2000, and I've filed appeal briefs for $10,000.  It all depends on the complexity and the client.

[BobRoberts]

Thanks Klav!

[JustAnotherExaminer]

Examiners catch a TON of flak for restriction petitions.

However, doesn't examiner have to rejoin upon finding the engine cover is allowable? (never done one myself)

Might not even be worth it.