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Author Topic: Restriction requirement  (Read 551 times)

OrgChemPhD_Agent

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Restriction requirement
« on: 02-09-18 at 01:56 pm »

To reply to a restriction requirement, I know you must make an election.  My questions are:

1.If I want to make an election with traverse, when should I present the arguments for the traverse? at the same time of making the election?
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OrgChemPhD_Agent

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Re: Restriction requirement
« Reply #1 on: 02-09-18 at 02:13 pm »

(continued)
My arguments are that the distinct inventions that Examiner considered have a technical relationship (i.e. share a common technical feature).

2. Also it is said adding some linking claims will help.  How and when should I do it?
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lazyexaminer

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Re: Restriction requirement
« Reply #2 on: 02-09-18 at 02:49 pm »

1. You need to make your arguments at the same time you elect, if you say you traverse but make no argument it will be considered an election without traverse and you will lose petition rights.

2. Linking claims might be possible based on the situation, and can be useful in that they may lead to rejoinder. See MPEP 809 and 821.04. If you are considering adding new claims I don't see why you wouldn't do it asap.
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OrgChemPhD_Agent

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Re: Restriction requirement
« Reply #3 on: 02-09-18 at 06:06 pm »

Thank you for your reply! Will read the sections of MPEP.
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memekit

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Re: Restriction requirement
« Reply #4 on: 02-12-18 at 07:23 am »

Here's my pro se newbie experience with restrictions.  On one application I just caved since I was intimidated, then filed a divisional.  I got some allowables and the div is pending, so add that time factor in and expense.  My first examiner stated he was overworked and got "points" or something and needed X points or he'd get fired.
On another application I elected and filed traverse remarks but didn't know you should amend claims to make linking claims at the same response.  The traverse was rejected even though the spec had cites of synergy as did the original claims, and I'd paid for a few more independent claims.  My second examiner once lamented the search burden to me.  Later some patent agent I had consulted with said that signatory examiners are highly offended if you traverse, so now I'm worried I just made an examiner enemy inadvertently (they already very much do not like pro-se-s), plus this same patent agent told me that examiners get some kind of bonuses for rejection.  This is all I know, and the part from my consult patent agent is hearsay.
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lazyexaminer

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Re: Restriction requirement
« Reply #5 on: 02-12-18 at 10:47 am »

Your first examiner was unprofessional, his production failures are not your concern.

Your patent agent friend has no idea what heís talking about.

Examiners donít hate pro se inventors as a rule. We hate anything that wastes our time, and pro ses are more likely to do things in abnormal ways that take a lot of time that an attorney wouldnít do.

An attorney wonít write claims as just a bunch of prose paragraphs.

An attorney wonít petition to the Director about every *rejection* in the case.

An attorney wonít call my SPE several times a week for status updates.

An attorney wonít petition to OPLA to require me to have a six hour interview.

An attorney wonít cite pages of state law cases about contract law to make a point.

An attorney will actually use citations, not just party names, when citing cases.

Etc. those are unusual, sure, but more important is having no idea how to write claims, and having no idea how to argue so that I can understand why I should allow your claims. I want to allow your case, but sometimes you need to help me out.

Iíve found many pro se inventors are geniuses, experts in their field, and really interesting people. But sometimes they also think they are experts in patent prosecution because theyíve done it a few times, and they are just obstinate and unyielding.

Most experienced examiners are well oiled machines but have limited time per case. Production = bonuses so literally time is money. A pro se spec is sometimes much harder to read and understand and just takes longer to examine, throwing a wrench in the machine. I appreciate and understand that the pro se inventor wants to (or needs to) do it alone, and the Office wants us to hold your hand, which is fine, but sometimes it is just a lot of time.

So I donít hate pro se inventors. But every time Iíll just wonder...is it going to be a good one or bad one.

ETA I should say that I appreciate all the pro ses on this site, Iím glad youíre trying to learn.
« Last Edit: 02-12-18 at 11:15 am by lazyexaminer »
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snapshot

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Re: Restriction requirement
« Reply #6 on: 02-12-18 at 11:29 am »

An attorney wonít petition to OPLA to require me to have a six hour interview.

 :o :o
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memekit

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Re: Restriction requirement
« Reply #7 on: 02-12-18 at 11:53 am »

Once a few years ago, my examiner said he had a last minute reference (in his pocket, he'd not produced it) against one of my [what would become] disallowed-s.  I wrote a few emails and still no reference, just a phone message that it was by "Assisi".  I searched for anything by Assisi, Asisi, Azzizi... no return, and he wasn't responding, so that's the one time I briefly called his SPE...after which he left another message that he'd said it was "a seesee, you know, a 'dissertation'" (he's a non-native speaker).  Still no author's name, that was a few phone messages later.  By the way the patent agent I'd hired from an online professional site, his bio stated he used to be an examiner, he was neither friend nor friendly. 
I just wonder why there's not some AI interface at least for the forms and setup and searches, then these could be decided in 4 hours instead of 4 years, at less cost.
« Last Edit: 02-12-18 at 12:12 pm by memekit »
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fewyearsin

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Re: Restriction requirement
« Reply #8 on: 02-12-18 at 12:16 pm »

Once a few years ago, my examiner said he had a last minute reference (in his pocket, he'd not produced it) against one of my [what would become] disallowed-s.  I wrote a few emails and still no reference, just a phone message that it was by "Assisi".  I searched for anything by Assisi, Asisi, Azzizi... no return, and he wasn't responding, so that's the one time I briefly called his SPE...after which he left another message that he'd said it was "a seesee, you know, a 'dissertation'" (he's a non-native speaker).  Still no author's name, that was a few phone messages later.
To be clear, there is nothing wrong with calling a SPE when the examiner is not doing their job.  This may have been one of those cases.  I personally have no problem with applicants calling my SPE.  My SPE is very reasonable.  If I did something wrong, he'll have me fix it, no big deal (unless I keep doing the same thing wrong over and over).  If I am right, then my SPE can explain it to applicant and helpfully get the applicant off of my back about it.

The problem is if Applicant is trying to "go over my head" to my SPE, or is impatient.  Give me a day to call you back.  Then call my SPE.  Don't call him after 15 minutes of waiting.  And don't call my SPE about things that you haven't first discussed with me.  The first thing my SPE will do after you call him is he will call me and figure out what is going on.  If I don't know what is going on because you haven't first called me, then you now have put both me and my SPE on your bad side by trying to play us against each other.
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This comment: does not represent the opinion or position of the PTO or any law firm; is not legal advice; and represents only a few quick thoughts from the author, not a well-researched treatise.  Seek out the advice of a competent patent attorney for answers to specific questions you may have.
 



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