Adding claims in response to restriction

[mbison]

I have a case with a set of device claims, a set of method claims, and a set of robot claims.  The independent robot claim includes both the device and a control system configured to perform the method.  The examiner has issued a restriction to elect one of three groups corresponding to the 3 independent claims. 

I am considering electing the method claims, canceling the other claims, and adding new independent claims (most likely a CRM and a system) that mirror the method claim verbatim.  My main goal is to make sure I get all my device dependent claims searched, even if all my claims are limited to the control functionality in this round.  I don't want to add my device dependent claims to the method (where they don't necessarily limit the method).  Instead, I am going to try to put them under my new system claim.

Is this a proper response?  Procedurally, can I add the new claims in the response to restriction document?  I suppose the worst the examiner could do is issue a new restriction?

[mersenne]

My main goal is to make sure I get all my device dependent claims searched, even if all my claims are limited to the control functionality in this round.

You can add claims in a restriction response (watch out for extra claim fees, though: claims that are only "withdrawn" still count against your 3/20!)  However, I don't think you're going to have much success getting the device dependent claims searched under a method independent.  I would expect either another restriction, or a restriction with constructive election.

If you believe your device is novel, why not elect those claims?  If it's patentable, then your method using the device is probably in good shape.

[Generalization alert!] I think apparatus claims are often more useful than methods -- they'll let you go after a competitor's device sitting on a store shelf, whereas method claims typically require you to go after an end user, or advance an "inducing infringement" argument against the manufacturer.  You may want to file divisionals to get the other inventions anyway, but the art search for the device may be more informative for you than a search for the method.

I guess the other option, if you want to learn at least something about both the device and the method, is to pursue the "independent robot" claims.  Especially if that's what you'll be selling: hardware with software configuring it to do whatever the method is.  Those kinds of claims sometimes get wrapped around the axle if the Examiner can find the device with a computer to do something else, because they'll say the computer would be capable of being programmed to do your method.  That's a poor rejection, but it's pretty common anyway.

[fewyearsin]

The "worst" is more likely that your new claims will be ignored under the "doctrine" of constructive election.  Basically, they weren't there at first, and would have been restricted if they were.

But to answer your initial question, not only is it an appropriate response, it is a good practice.  Instead of losing those withdrawn claims, you are making the most of the application and examination.

Another good practice, if you end up still with withdrawn claims, is to consider amending the withdrawn claims to mirror amendments to the examined claims so that if you want to request rejoinder, the claims don't need further amendment.  Some examiners will refuse rejoinder if the claims haven't been amended during prosecution.  I don't know if that is appropriate, but it is reality.

[mbison]

Thanks for the responses.  In this case, the device claim is undoubtedly more valuable than the method claim because the method claim uses the device and contains all of the limitations of the device claim.  I'm reluctant to elect the device here because I'm not as confident in its patentability.  If I elect the device, I could easily get boxed into a corner where I really need to rely on the control functionality, but can't.  In this case, I feel much safer electing the method and then assuming I get an allowance, going for the device in a broader continuation. 

If my claims end up looking like:
1. A method of using mechanical device X, comprising computer functions A B C D.

2. A system comprising mechanial device X and a controller configured to perform computer functions A B C D

I would think it would be really tough to maintain a restriction, and I can get still get all my device dependent limitations searched.  I make the examiner's job easier in that he doesn't have to worry about allowing my broader device claim, but he may be unhappy about still having to search essentially all of my claims.

In this case, the restriction is in my view not warrented since the claims are in essence covering the same invention and are already pretty close to mirroring each other.  I just haven't found much success in arguing with examiners over restrictions, which is why I am considering this alternative route. 

[mersenne]

I just haven't found much success in arguing with examiners over restrictions ...

Me neither, and it's really frustrating because by the time you could do anything about it (via petition) you're already down the road in prosecution on the elected claims.

[still_learnin]

I have a case with a set of device claims, a set of method claims, and a set of robot claims.  The independent robot claim includes both the device and a control system configured to perform the method. 

the method claim uses the device and contains all of the limitations of the device claim. 
If my claims end up looking like:
1. A method of using mechanical device X, comprising computer functions A B C D.
2. A system comprising mechanial device X and a controller configured to perform computer functions A B C D
I would think it would be really tough to maintain a restriction

Perhaps it's not strictly relevant to your original question about restriction, but this thread has piqued my interest, so I'll ask anyway. I'm having trouble understanding the big picture and the relationship between the things.

There's a "device," which is a "mechanical device." (Meaning no electronics? No electronics that you care about?)

There's a controller, probably also a device but not "the device". 

There's a robot which includes "the device" and "the controller." (For this reason, I'd usually think of the robot as a "system" but you could also make the argument that it's a third device.)

The method you're interested in protecting is a controller method. (Even though, arguably, all three things perform methods.)

What's the relationship between A/B/C/D and "the device"? Do these functions operate, or operate on, "the device?" Do these functions manipulate/move the device? Do these functions cause the device to do other things?

[mbison]

There's a "device," which is a "mechanical device." (Meaning no electronics? No electronics that you care about?)

            No electronics in this case

There's a controller, probably also a device but not "the device". 
           
            Right, a computer basically

There's a robot which includes "the device" and "the controller." (For this reason, I'd usually think of the robot as a "system" but you could also make the argument that it's a third device.)

            Agreed, a system seems most appropriate

The method you're interested in protecting is a controller method. (Even though, arguably, all three things perform methods.)

            Basically, yes.  Control functions that involve using the device.

What's the relationship between A/B/C/D and "the device"? Do these functions operate, or operate on, "the device?" Do these functions manipulate/move the device? Do these functions cause the device to do other things?
[/quote]

            They cause the robot to move the device to do certain things.