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Author Topic: Restriction Requirement Practice  (Read 143 times)

examiner_bio

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Restriction Requirement Practice
« on: 12-07-17 at 08:46 am »

I was asked to draft a response to a restriction requirement (RR) a couple of months ago and after just reviewing the filed response I have a few questions:

1.  After the listing of the claims, and in the remarks section, I thought it was a requirement to state the status of all the claims in any office action response to the USPTO (which a RR is categorized under).  In other words, you need to say something like, "Claims 1-10 are pending; claims 2 and 3 have been amended; claims 8-10 stand withdrawn.  Claims 11-20 have been canceled" (note, this is fictitious and an example only).  I thought there was a section in the MPEP that said as much.  Does anyone have a direct reference handy?

2.  Sometimes examiners combine a RR with an election of species, muddling the waters.  I spoke to an attorney the other day who said that even if an examiner does not require an election of species for a restriction group, you still need to make some sort of statement saying as much.  What's your take?  Is it worth the time to put another sentence or two in a RR response to something the Examiner has not even raised?

I appreciate your insights...
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still_learnin

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Re: Restriction Requirement Practice
« Reply #1 on: 12-07-17 at 11:54 am »

1.  After the listing of the claims, and in the remarks section, I thought it was a requirement to state the status of all the claims in any office action response to the USPTO (which a RR is categorized under).  In other words, you need to say something like, "Claims 1-10 are pending; claims 2 and 3 have been amended; claims 8-10 stand withdrawn.  Claims 11-20 have been canceled" (note, this is fictitious and an example only).  I thought there was a section in the MPEP that said as much. 

I'm certain this is not a CFR requirement, and fairly certain it's not even discussed in the MPEP. All that's required is that status identifiers be used in a listing of the claims.

That said, almost every practitioner I know does include a summary of the claims statement. Personally, I think it's bad practice. At best, it's redundant: the listing of the claims is what controls -- and for all I know, is all the Examiner cares about. Two, it leads to confusion if there's a mismatch between the claim listing and the summary sentence. Three, it's stuff like this that leads to bulky responses, mostly fluff and often little substance. Waste of time for all readers.

While I'm on a rant, what annoys me even more is the "Commissioner of Patents, Mail Stop AF" block on the header page. Mail stops went the way of the dodo about ten years ago. And I don't think the Commissioner reads my "mail." :-)

2.  Sometimes examiners combine a RR with an election of species, muddling the waters.  I spoke to an attorney the other day who said that even if an examiner does not require an election of species for a restriction group, you still need to make some sort of statement saying as much.  What's your take?  Is it worth the time to put another sentence or two in a RR response to something the Examiner has not even raised?

CFR says:
Quote
37 CFR 1.146  Election of species.
In the first action on an application containing a generic claim to a generic invention (genus) and claims to more than one patentably distinct species embraced thereby, the examiner may require the applicant in the reply to that action to elect a species of his or her invention to which his or her claim will be restricted if no claim to the genus is found to be allowable.
The way I read that, only if the Examiner requires election (of species) is the Applicant required to elect a species.

To me, that means that how you handle the situation is a matter of philosophy or style. Some practitioners feel strongly that zealous representation means Applicants should do as much as required by law, and not a bit more. Other practitioners feel that doing a bit more is important when not doing so slows down prosecution or annoys the Examiner. Other practitioners feel that it's important to give the Examiner as much help as possible to get the case allowed as soon as possible.

Your choice should be informed, of course, by any input your client has given you on these sorts of matters.
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The above is not legal advice, and my participation in discussions on this forum does not create an attorney-client relationship.

ThomasPaine

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Re: Restriction Requirement Practice
« Reply #2 on: 12-07-17 at 01:20 pm »

"I'm certain this is not a CFR requirement"

You are correct.

"That said, almost every practitioner I know does include a summary of the claims statement. Personally, I think it's bad practice."

I disagree.  But you make a compelling argument.

"The way I read that, only if the Examiner requires election (of species) is the Applicant required to elect a species."

Correct.
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Tobmapsatonmi

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Re: Restriction Requirement Practice
« Reply #3 on: 12-07-17 at 06:42 pm »


While I'm on a rant, what annoys me even more is the "Commissioner of Patents, Mail Stop AF" block on the header page. Mail stops went the way of the dodo about ten years ago.

Mine say "Filed electronically via EFS-Web".

Exception:  Notice of appeal I still paper mail to "Mail Stop: AF". 

Whether it is still there as a "mail stop" per se, I don't know, but AFAIK the PTO hasn't given us guidance otherwise for paper mailings.
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