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[danielb]

I have received a written opinion from the Korean International Searching
Authority (ISA). The opinion states that the application contains
two inventions which have a common technical feature that lacks
novelty and inventive step with respect to cited prior art, and thus
concludes that the claims do not have a single general inventive
concept.

However, the written opinion goes on to state that both sets of
claims (for the two inventions) are novel over cited prior art,
involve an inventive step, and have industrial applicability.

I take all this to mean that (1) the ISA believes the claims are
allowable (subject to local constraints such as allowable subject
matter), and that (2) a restriction requirement will probably be
received after entering US national stage. Is this a reasonable
interpretation?

Thanks.

Dan Beinart
dan_beinart@ieee.org

[Wiscagent]

Your interpretation is reasonable, but there are a few factors you should keep in mind.

=> The US restriction requirements are similar, but not the same as the PCT unity of invention requirements; so when the case goes the national phase in the US there could be some surprises in that respect.

=> For the purpose of the ISR, only the publication dates of references are of concern.  But for the US examination, the application date of a reference can be important.  So some references that would not have been considered can be considered by the US PTO.

=> The ISR focuses on the claims and looks for relevant prior art.  The USPTO should also consider whether there is proper support for the claims (35 USC 112).

=> Of course the USPTO will conduct its own search and might come up with some other stuff to use against your application.

I probably forgot a few other differences, but yes the ISR should give you a reasonable preview to what you might see from the USPTO.

[humphrey]

With respect to point 2 (the unity objection) I would not assume that you will receive a restriction requirement based on the same criteria. Generally speaking, you will draw a unity objection for having multiple independent claims of the same type (e.g. several independent composition claims of varying scope). On the other hand, the USPTO will generally group the same claim types together and instead restrict you on the basis of the presentation of different types of claims (e.g. methods and compositions...). So while it's pretty safe to assume that there will be a restriction requirement in the US, it is usually not based on the same criteria (or the same claims) as in KIPO.