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Author Topic: Species Election Requirement for Method Claim  (Read 951 times)

BixPatents

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Species Election Requirement for Method Claim
« on: 07-07-17 at 03:55 pm »

I have a few similar cases with the same Examiner, each of which have received a restriction requirement.  In some cases, the Examiner has further gone on to require the election of species for some dependent claims.  I typically have shrugged at restriction requirements in the past, but he seems to be going overboard here so I am considering traversing.

I have an independent method claim directed towards aligning nucleotide sequences to a reference sequence.  Some dependent claims recite additional steps that may be taken after the aligning.  The species election requirement reads:

"Species A: Claims 2, 3, and 4 recite patentably distinct species of modes of operation.  In order to begin examination on the merits, Applicant is required to elect a single disclosed species from ONE of the groups set forth below:
i.  determining distance between aligned nucleotide sequences (claim 2)
ii. generating statistics about the alignment (claim 3)
iii. determining a confidence value for the alignment (claim 4)"

Notably, each of these dependent claims are those that require an additional positive step - i.e., they recite "the method further comprising...", as opposed to further defining one of the steps already in claim 1.  The Examiner has characterized each of these subsequent steps as a genus of a "mode of operation."  Taken to the extreme, it seems that any dependent claim that would add a step would also be subject to election.

Anyway - I think the primary argument against the election would be that these steps should not be classified as distinct species because they do not recite a generic "mode of operation."  However I'm having a little trouble finding a definition of what a mode of operation actually is in MPEP 800.  I know the best route is likely just to pick a species, but if anyone out there wants to play devil's advocate I'm happy to listen!

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NJ Patent1

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Re: Species Election Requirement for Method Claim
« Reply #1 on: 07-07-17 at 08:39 pm »

A bit curious.  Do you have a Markush group in claim 1?  The fact that the dependent claims recite "additional steps" may or may not mean much if "multiple species of operation" are carried over from indy claim 1.
I've never seen a "species of mode of operation" election. But IF you DO have a Markush group in claim 1, youv'e essentially said the "modes" are fungible (allowance made for an occasionally inoperative embodiment).  Without more, I'd pick a "species" and move on.  You are (theoretically) entitled to further
examination of a "reasonable number" of other species after claim 1 (assuming a Markush) is allowable after initial search and examination.
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ThomasPaine

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Re: Species Election Requirement for Method Claim
« Reply #2 on: 07-07-17 at 09:06 pm »

Claims are never species   MPEP 806.04(e)   
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BixPatents

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Re: Species Election Requirement for Method Claim
« Reply #3 on: 07-10-17 at 09:39 am »

Thanks for the responses!

@NJPatent1, there is no Markush group in claim 1.  Nor is there any language regarding a "mode of operation" in any of the claims.  Also, each of the additional steps could be practiced concurrently; they're not mutually exclusive.

The main issue is that the claim recites steps A, B, and C; the dependent claims recite additional steps D, E, F; and the Examiner has decided that those additional steps are in a genus of "modes of operation", of which one must be elected.  This appears to be a clever way to call any actionable step a "mode of operation" and thus eliminate searching for those features:

"The disclosed species of the additional modes of operation do not overlap in scope, as they are directed to entirely different functional limitations that would require different prior art searches.  In addition, these species are not obvious variants of each other based on the current record.  See MPEP 806.04(b), (f), (h)."

After thinking about it for a little bit, I wouldn't agree that the additional steps are "modes of operation" - they basically describe some QC steps that can be taken to verify certain features of the independent claim (calculate statistics, confidence values, etc.).  It's possible that I may want to pull one or two of these (or similar features) back into claim 1 later, though not likely.  I plan on giving him a call, though the Examiner Ninja report suggests that I've drawn the short stick here (17% allowance rate).

@ThomasPaine, thank you for the distinction!  I think the Examiner could simply clarify the language he's used if pressed?

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ThomasPaine

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Re: Species Election Requirement for Method Claim
« Reply #4 on: 07-10-17 at 02:12 pm »

"I think the Examiner could simply clarify the language he's used if pressed?"

No.  The MPEP  is clear.  The claims are not species.  To identify certain claims are "species" is simply wrong.  So the whole requirement is wrong. 

That should be your response:  The requirement is improper because it improperly identifies the claims as species.  The claims are not species.  Reconsideration and withdrawal of the requirement are respectfully requested.
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BixPatents

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Re: Species Election Requirement for Method Claim
« Reply #5 on: 07-11-17 at 08:23 am »

Understood!  Will respond accordingly.  Thank you!
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lawstudent

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Re: Species Election Requirement for Method Claim
« Reply #6 on: 07-13-17 at 01:05 am »

While any given claim is not a species, the scope of a claim may define a single species, and the claim thus be considered a specific species claim; or alternatively the scope can include several species, and the claim thus be a generic claim.

The proposed argument is unsound and therefore will be ineffective.
« Last Edit: 07-13-17 at 01:56 am by lawstudent »
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ThomasPaine

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Re: Species Election Requirement for Method Claim
« Reply #7 on: 07-13-17 at 07:33 am »

"The proposed argument is unsound and therefore will be ineffective."

Wrong.

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snapshot

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Re: Species Election Requirement for Method Claim
« Reply #8 on: 07-14-17 at 01:13 pm »

While any given claim is not a species, the scope of a claim may define a single species, and the claim thus be considered a specific species claim; or alternatively the scope can include several species, and the claim thus be a generic claim.

The proposed argument is unsound and therefore will be ineffective.

While the argument may be ineffective at first because the examiner is unaware of what a proper species requirement is, the rest of your post makes no sense in terms of what is required for a proper species restriction.

Claims themselves are never species.  When one elects after a species requirement is made, they indicate which claims correspond to that species.  But if the species aren't laid out in terms of Figures/embodiments in the specification, it's an improper requirement.
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BixPatents

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Re: Species Election Requirement for Method Claim
« Reply #9 on: 07-17-17 at 09:55 am »

Thanks for the additional discussion.  This has definitely has improved my understanding of species elections!

Anyway, I ended up arguing that the restriction was improper because the claims are not species, as suggested.  I also hedged by adding that those claims are not mutually exclusive features (MPEP 806.04).  It may be fun to petition if the Examiner disagrees.
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ThomasPaine

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Re: Species Election Requirement for Method Claim
« Reply #10 on: 07-17-17 at 10:53 am »

There is no fee for filing a petition against a restriction requirement, but it must be done no later than filing a notice of appeal.
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