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Author Topic: Election by original presentation & non-responsive amendment  (Read 408 times)

jothya

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Any thoughts from the group on the following situation are greatly appreciated (I will try to be as brief as possible).

In response to a non-final Office action, all of the independent claims (method and apparatus claims) were amended.  Admittedly, the amendments to the independent claims were substantial, including additional elements and narrowing the scope from a generic user to a particular type of user.  However, all of the original elements remained in the amended independent claims.  Many of the dependent claims were also amended, mainly to be consistent with the amendments to the independent claims.  Example of an amended independent claim is below:

1. A method of operating an apparatus to facilitate a user worker to perform an action, the method comprising:

doing new element D;

doing new element E;
 
doing original element A;

doing original element B with original and new detail;

doing new element F; and

doing original element C with original and new detail.

The examiner issued a notice of non-response amendment stating that the amended claims cancelled limitations containing subject matter drawn to the elected invention and adding limitations drawn to a non-elected invention.  The examiner states that:

invention I is drawn to a method for doing original element A and doing original element B (USC 00.00 and CPC A01A/ 00/0000), and

invention II is drawn to a method for doing new element D and doing original element C (USC 00.05 and CPC A01A/ 00/0007). 

The examiner then concludes that the amended claims have altered the scope of invention II from that of invention I, treats the original claims as being a constructive election, lists the boiler plate reasons for a proper restriction and cites 37 CFR 1.142(b) and MPEP 821.03.

Doesn't any amendment to the claims alter the scope of the invention?  Contrary to what the examiner contends, the amended claims do not have materially different modes of operation or function (just more details) and overlap in scope.  It seems like the examiner just doesn't want to search for the new limitations. 

The best thing I can find on this subject is one of Karen's blogs [http://allthingspros.blogspot.com/2009/12/what-happens-when-claims-to-different.html]. 

Is simply traversing the constructive restriction (if it can be called that) the best way to respond?

I also can't find the answer to whether "claims added by amendment" or a "newly submitted claim" (MPEP 821.03) are limited to new claims added during prosecution or include amended original claims. 

It also looks like a notice that the amendment is non-responsive (and should not be entered) is only proper when an amendment cancels all claims drawn to the elected invention and presents only claims drawn to the non-elected invention. 

Is there a way to force the examiner to issue an Office action with a restriction-plus-election-by-presentation, instead of the communication that the response is non-responsive?

Thanks in advance.
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khazzah

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Is simply traversing the constructive restriction (if it can be called that) the best way to respond?

I think it is indeed a constructive restriction, and would traverse it as such.

I also can't find the answer to whether "claims added by amendment" or a "newly submitted claim" (MPEP 821.03) are limited to new claims added during prosecution or include amended original claims. 

AFAIK, the distinction is irrelevant. Either path can wander into a "new invention."

It also looks like a notice that the amendment is non-responsive (and should not be entered) is only proper when an amendment cancels all claims drawn to the elected invention and presents only claims drawn to the non-elected invention. 

Agreed. Note that non-responsiveness is one of those petitionable-not-appealable issues. So if you plan to fight this, your two-month petition clock is running.

Is there a way to force the examiner to issue an Office action with a restriction-plus-election-by-presentation, instead of the communication that the response is non-responsive?

There's no way to *force* an Examiner to do anything :) The way to take the issue away from the Examiner is to petition. 

Most folks would probably suggest a phone call to the Examiner to try to work this out before petitioning.
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Karen Hazzah
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Information provided in this post is not legal advice and does not create any attorney-client relationship.

jothya

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Thanks, Karen.
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bluerogue

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invention I is drawn to a method for doing original element A and doing original element B (USC 00.00 and CPC A01A/ 00/0000), and
invention II is drawn to a method for doing new element D and doing original element C (USC 00.05 and CPC A01A/ 00/0007). 
The examiner then concludes that the amended claims have altered the scope of invention II from that of invention I, treats the original claims as being a constructive election, lists the boiler plate reasons for a proper restriction and cites 37 CFR 1.142(b) and MPEP 821.03.

Did the examiner cancel all claims or just those directed to invention II? 

Quote
Doesn't any amendment to the claims alter the scope of the invention?  Contrary to what the examiner contends, the amended claims do not have materially different modes of operation or function (just more details) and overlap in scope.  It seems like the examiner just doesn't want to search for the new limitations. 
Is simply traversing the constructive restriction (if it can be called that) the best way to respond?

It does. It depends on how much altering the new limitations do. I've had amendments add new element C to original elements A and B that completely changes the scope of the invention to where I would be comfortable giving a restriction by original presentation.
You can try a traverse. Failing that, you're looking at a petition.

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It also looks like a notice that the amendment is non-responsive (and should not be entered) is only proper when an amendment cancels all claims drawn to the elected invention and presents only claims drawn to the non-elected invention. 

Are you sure it's a notice of non-responsive?  For that to happen, you'd have to have 0 claims remaining, which from above, doesn't sound like the case.  If it's not responsive, you're given either 2 months or 0 months to file a responsive response.  If you received an OA or FOA that examined invention I and cancelled invention II, then it was considered responsive.

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Is there a way to force the examiner to issue an Office action with a restriction-plus-election-by-presentation, instead of the communication that the response is non-responsive?

No way to force an examiner to do anything short of calling the SPE or petitioning. Sorry, but it's true. 
I would recommend a call to the examiner to get things cleared up before resorting to the SPE or petition.
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The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

jothya

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Did the examiner cancel all claims or just those directed to invention II? 

The examiner did not cancel any of the claims.  Original claims 1-20 were examined in a first non-final Office action.  Independent claims 1 and 10 were amended in response.  The examiner classified amended claims 1-20 as a new invention by saying that original claims 1-20 (labelled invention I by examiner) are drawn to "selected limitations from original independent claim 1" in classification #1 and amended claims 1-20 (labelled invention II by examiner) are drawn to "selected limitations from amended independent claim 1, different from selected limitations from original independent claim 1" in classification #2 (#2 being a slightly different sub-class as #1, but referring to the same thing).

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It does. It depends on how much altering the new limitations do. I've had amendments add new element C to original elements A and B that completely changes the scope of the invention to where I would be comfortable giving a restriction by original presentation.
You can try a traverse. Failing that, you're looking at a petition.

Maybe I am missing something, but respectfully, changing the scope of the invention doesn't seem to be the standard for restriction by original presentation.  The MPEP discusses newly submitted claims directed to an invention distinct from and independent of the invention previously claimed. 

MPEP 821.03 states that the practice restriction by original presentation is not applicable where applicant presents claims that could not have been restricted from the claims drawn to the elected invention had they been presented earlier.  It is hard for me to believe that if amended independent claim 1 had been presented as another original independent claim or the newly added limitations of amended independent claim 1 had been included in an original dependent claim, those claims would not have justified a restriction. 

Could you provide an example where new element C added to original elements A and B would so drastically change the scope of the invention that the amended claim would be distinct from the previous claim, I am having a hard time imagining one.  I can imagine an example where element B is cancelled and replaced with element C, directing the claim to a different and distinct (mutually exclusive) invention.  For example:

A method for making a sandwich comprising:
spreading peanut butter on a first slice of bread;
spreading jelly placing banana pieces on a second slice of bread; and
stacking the first and second slice of bread in face-to-face contact.

I can see how this amendment would present a new claim that is distinct from and independent of the original claim.  However, the current situation is more like:

A method for making a sandwich comprising:
determining that it is lunch time;
providing two slices of bread;
providing peanut butter;
providing grape jelly;
spreading peanut butter on a first slice one of the two slices of bread with a knife;
cleaning the knife:
spreading grape jelly on a second slice one of the two slices of bread with the knife; and
stacking the first one of the two slices of bread and the second slice one of the two slices of bread in face-to-face contact.

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Are you sure it's a notice of non-responsive?  For that to happen, you'd have to have 0 claims remaining, which from above, doesn't sound like the case.  If it's not responsive, you're given either 2 months or 0 months to file a responsive response.  If you received an OA or FOA that examined invention I and cancelled invention II, then it was considered responsive.

It is a notice of non-responsive amendment.  The notice states that the reply to the constructive restriction requirement must include (i) an amendment to the claims which presents claims consistent with those claims that have been constructively amended (i.e., invention I), and (ii) an identification of any dependent claims that are not amended but encompassing the scope of the claims that were constructively elected. 

This brings up another question I have.  MPEP 821.03 states that an amendment canceling all claims drawn to the elected invention and presenting only claims drawn to the non-elected invention should not be entered. Such an amendment is non-responsive.  Does becoming part of the IFW mean an amendment is entered?

The response to the previous non-final Office action with the amended claims that are now being constructively restricted seems to have been entered (it is in the IFW on PAIR).   If the claims are amended in response to this notice, are the amendments applied to the original claims - before the amendments presented in the response to the non-final OA, or are the amendments applied to the amended claims - that were amended in the response to the non-final OA?

Quote
No way to force an examiner to do anything short of calling the SPE or petitioning. Sorry, but it's true. 
I would recommend a call to the examiner to get things cleared up before resorting to the SPE or petition.


Thanks.
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bluerogue

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The examiner did not cancel any of the claims.  Original claims 1-20 were examined in a first non-final Office action.  Independent claims 1 and 10 were amended in response.  The examiner classified amended claims 1-20 as a new invention by saying that original claims 1-20 (labelled invention I by examiner) are drawn to "selected limitations from original independent claim 1" in classification #1 and amended claims 1-20 (labelled invention II by examiner) are drawn to "selected limitations from amended independent claim 1, different from selected limitations from original independent claim 1" in classification #2 (#2 being a slightly different sub-class as #1, but referring to the same thing).

It is a notice of non-responsive amendment.  The notice states that the reply to the constructive restriction requirement must include (i) an amendment to the claims which presents claims consistent with those claims that have been constructively amended (i.e., invention I), and (ii) an identification of any dependent claims that are not amended but encompassing the scope of the claims that were constructively elected. 

This brings up another question I have.  MPEP 821.03 states that an amendment canceling all claims drawn to the elected invention and presenting only claims drawn to the non-elected invention should not be entered. Such an amendment is non-responsive.  Does becoming part of the IFW mean an amendment is entered?

The response to the previous non-final Office action with the amended claims that are now being constructively restricted seems to have been entered (it is in the IFW on PAIR).   If the claims are amended in response to this notice, are the amendments applied to the original claims - before the amendments presented in the response to the non-final OA, or are the amendments applied to the amended claims - that were amended in the response to the non-final OA?

Frankly, I have no idea what the examiner is doing.  None of it makes any sense to me (and not to you either).  It sounds like a talk with the examiner and maybe the SPE is in order. 
As to your question re: entered amendments, it's pretty unclear to me too.  I've usually just handled it as acting if the amendments were entered and just make a note in the office action that the claims as presented are pending. If you're making any further amendments, I'd probably just put a statement in the response that you are unsure whether the previous amendments have been entered, but presenting an amendment as if they were.  That keeps the record clear shouldn't be an issue.

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Could you provide an example where new element C added to original elements A and B would so drastically change the scope of the invention that the amended claim would be distinct from the previous claim, I am having a hard time imagining one.  I can imagine an example where element B is cancelled and replaced with element C, directing the claim to a different and distinct (mutually exclusive) invention. 

Most restrictions by original presentation usually come up in the chemical areas where you elect a species and then you realize that species is no good and want to try another.  But using your PBJ example (ignore antecedent basis and potential indefiniteness errors):

A method of making a sandwich comprising:

Ex1:
picking grapes;
cooking grapes with sugar and pectin to a jelly consistency;
placing the cooked grape mixture into a jar;
canning the cooked grape mixture in the jar;
opening the jar;

spreading peanut butter on a first slice of bread;
spreading jelly on a second slice of bread;
stacking the first and second slice of bread in face-to-face contact.

Ex2:

spreading peanut butter using a first mechanical arm with a first knife attached on a first slice of bread;
spreading jelly using a second mechanical arm with a second knife attachedon a second slice of bread;
stacking the first and second slice of bread in face-to-face contact.

Ex3:

A method comprising:

receiving a request from a buyer seller to buy sell an item;
querying sellers buyers to provide buy the item;
conducting an auction to determine which seller buyer of the sellers buyers to provide receive the item to the buyer.

I would argue that Ex1 is now directed to making and canning jelly as opposed to making a sandwich with the making of the sandwich as post solution activity or at least they're now a combination usable together.  Ex2 is probably still directed to the same invention. Ex3 drastically changes the scope despite having most of the words of the claim intact.

I'd be comfortable restricting Ex1 and Ex3. 

Does this help?


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The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

jothya

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Appreciate it, blue. 

So I guess if you disagreed with the constructive restriction by original presentation requirement by the Examiner for Ex. 1, you would traverse with arguments directed to why the claim is still directed to making a sandwich and not a pre-sandwich-making activity.
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