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Author Topic: Species Restriction Requirement - Examiner's Incompetence on Display  (Read 8187 times)

SNielson

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Another day, another crappy species restriction requirement.  This is what the office action says:

"This application contains claims directed to the following patentably distinct species 1) the paper clip of claims 1-15; 2) the paper clip of claims 16-20; 3) the paper clip of claims 21-26.  The species are independent or distinct because they each set out distinct paper clips.  In addition. these species are not obvious variants of each other based on the current record."

The Office Action states that for my response to be complete it must elect a species and identify the claims that encompass the elected species.

Question: how do I identify claims that encompass the elected species when the species itself is a group of claims?!?

Why do the majority of the species restrictions I receive contain this kind of crap?  Does the PTO even try to train examiners about how to properly issue a species restriction?  The MPEP itself states "Claims are definitions or descriptions of inventions. Claims themselves are never species." MPEP 806.04(e).  But as sure as the sun rises, my next species restriction will list a group of claims as though they are a species.

Every now and then, I get a species restriction that is proper, meaning they actually use the figures or the examples to define the species, but that is rare.

How would you respond?  In the past, I have given a few examiners an education about this type of thing (I elect the most detailed claim and then show that almost every other claim reads on the "elected species"), but I am growing weary of it.  The Examiners don't really like to get schooled (i.e., they tend to get mad at me) and I don't really like spending the time and effort it takes to school them.

I know what they want, an easy way to reduce the number of claims to make their lives easier (and force my client to file three patent applications).  I guess I could play along, but it is such a complete farce that I have a really hard time doing it.
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khazzah

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How would you respond? 
Didn't you basically say that you don't want to spend the time fighting the rejection and you don't want to cave in?

I don't think you're going to find any magic answers here. Those are basically your only two options with any issue that comes up in prosecution, right?

I can think of two options you didn't explicitly mention -- a call to the Examiner and a petition -- but both come under "fighting the rejection" in my book.

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Karen Hazzah
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SNielson

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Khazzah,

I'm just frustrated that it seems like the entire examining core is incompetent when it comes to species restrictions.

The real rub here is how do you determine which claims read on the elected species.  How would you do it in this situation (where the examiner uses a group of claims to define the species)?
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khazzah

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The real rub here is how do you determine which claims read on the elected species.  How would you do it in this situation (where the examiner uses a group of claims to define the species)?

Ah, I didn't read your post carefully enough. You're not just venting, and you haven't decided not to fight, you're deciding the best way to fight a situation that you haven't seen much -- restriction where the examiner uses a group of claims to define the species.

Sorry, don't have any words of wisdom for you. Maybe someone else will chime in about restriction practice.
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Karen Hazzah
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SNielson

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Ah, I didn't read your post carefully enough. You're not just venting, and you haven't decided not to fight, you're deciding the best way to fight a situation that you haven't seen much -- restriction where the examiner uses a group of claims to define the species.
Actually, I have seen it a lot and that is what is bugging me.

One genius examiner tried to issue a species restriction for almost every claim.  I think he thought it would be an easy way for him to restrict examination to a single independent claim (either that or he was just dumb . . . I certainly can't eliminate that possibility).  I elected the most detailed claim (dependent claim 27 or something) and then argued that 90% of the rest of the claims read on the elected species.  He went berserk.  Two petitions later, the examiner was finally ordered to examine all of the claims I listed since they actually encompassed the elected species.
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Isaac

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The Office Action states that for my response to be complete it must elect a species and identify the claims that encompass the elected species.

Question: how do I identify claims that encompass the elected species when the species itself is a group of claims?!?

Actually that part of the response should be fairly easy.  The examiner has already listed the claims.

Quote
Every now and then, I get a species restriction that is proper, meaning they actually use the figures or the examples to define the species, but that is rare.

This is predominately the type of species election requirement I see.   Even the figure-based election requirements can be improper.

Quote
How would you respond?  In the past, I have given a few examiners an education about this type of thing (I elect the most detailed claim and then show that almost every other claim reads on the "elected species"), but I am growing weary of it.  The Examiners don't really like to get schooled (i.e., they tend to get mad at me) and I don't really like spending the time and effort it takes to school them.

I think you have to continue to respond as you currently do.
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Isaac

klaviernista

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Lots of examiner's find species elections tough to understand and tough to implement.  And I would wager that a full 99% of them do not realize that imposing an election of species often does not help them one bit.  Applicants are, in fact, entitled to have a reasonable number of species examined.  Thus, whether or not the applicant is arequired to elect a single species for examination, the examiner is going to have to examine at least a reasonable number of species once the elected species is allowed.  Ironically, that is a bigger pain for the examiner than had he/she not imposed a species election at all.  Why?  Because just when the examiner thinks he/she can allow the case, she has to go back an examine a bunch of other species.

To be fair, one of the most common mistakes I see from examiners is that they confuse or inappropriately interrelate restriction requirements and requirements for election of species.  They really are quite different, but the MPEP and the PTO's training (at least when I was there) do not make those differences all that apparent.

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Isaac

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Because just when the examiner thinks he/she can allow the case, she has to go back an examine a bunch of other species.

Aren't those examinations for form only?  The examiner should not need to conduct a search when considering rejoinder.
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Isaac

jmegapac

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Because just when the examiner thinks he/she can allow the case, she has to go back an examine a bunch of other species.

Aren't those examinations for form only?  The examiner should not need to conduct a search when considering rejoinder.


Generally if the allowed claim is directed to a genus, then all of the non-elected claims directed to non-elected species can be allowed via rejoinder.

If the allowed claim is directed to a species, then most examiners probably wouldn't allow non-elected claims via rejoinder. Since the non-elected claim would need to have all the limitations of the allowed claim to be considered for rejoinder, rejoinder between two species usually does not occur (as long as the species election requirement is proper).
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jmegapac

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Khazzah,

I'm just frustrated that it seems like the entire examining core is incompetent when it comes to species restrictions.

The real rub here is how do you determine which claims read on the elected species.  How would you do it in this situation (where the examiner uses a group of claims to define the species)?

The species election requirement is improper (if what you wrote is true). I would call the examiner and explain why it's improper. If that doesn't work, I would call the SPE. The office (at least certain TC's) is trying to improve restriction practice, so SPEs should be more receptive of such complaints.
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SNielson

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The species election requirement is improper (if what you wrote is true). I would call the examiner and explain why it's improper. If that doesn't work, I would call the SPE. The office (at least certain TC's) is trying to improve restriction practice, so SPEs should be more receptive of such complaints.
I hope you are right that the PTO is trying to improve restriction practice.  I rarely complain to SPEs, but when (not if) I get another one of these lousy species restriction requirements, I am going to call the Examiner and, if that doesn't work, the Examiner's SPE.
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SNielson

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In case anyone cares about the outcome, the examiner agreed that the species restriction was improper and withdrew it.  It's a good outcome, but I doubt my client likes to pay me to teach examiners things they really should know already.
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patentatt

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The species election requirement is improper (if what you wrote is true). I would call the examiner and explain why it's improper. If that doesn't work, I would call the SPE. The office (at least certain TC's) is trying to improve restriction practice, so SPEs should be more receptive of such complaints.
I hope you are right that the PTO is trying to improve restriction practice.  I rarely complain to SPEs, but when (not if) I get another one of these lousy species restriction requirements, I am going to call the Examiner and, if that doesn't work, the Examiner's SPE.

I routinely complain to SPEs and find doing so to be pretty effective, especially if you are working with a loose cannon primary.

Of course, EOS requirements are not the only things that the Examining Corps. gets wrong.  Patent law is complex, examiners are generally not lawyers, and they have to work with severe time and resource constraints.
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