Difficult restriction requirement

[MR]

I've received a restriction requirement in which the examiner has essentially deemed each dependent claim (of nearly 19 dependent claims) to be a respective independent and distinct species.  E.g.,

2.  The system of claim 1, in which the screw is composed of stainless steel.

3.  The system of claim 1, in which the screw is a Phillips-head screw.

4.  The system of claim 1, in which the screw has a length of at least 1 inch.

and the examiner identified

- Species A, in which the screw is composed of stainless steel.

- Species B, in which the screw is a Phillips-head screw.

- Species C, in  the screw has a length of at least 1 inch.

and so on. 

This doesn't seem reasonable; can anyone tell me whether it's compliant with the regs and MPEP? 

[Robert K S]

Rule 141(a) expressly permits a reasonable number of distinct species to be recited as claims depending from an allowable generic claim.  You can make this argument, and possibly the examiner will withdraw the rejection on the next action, but if the examiner decides not to, it can be on the basis that a generic claim has not yet been found allowable.  At such point, the applicant has to decide whether to keep the status of the restricted species claims as withdrawn, on hope that they will eventually be rejoined, at the expense of either not offering for examination other claims within the scope of the elected species or having to pay excess claims fees to have such claims examined.

[EvilLost]

... or having to pay excess claims fees to have such claims examined.

I'm not following this statement. You cannot pay extra claim fees to overcome a restriction requirement....??

Why would you need to pay excess claim fees at all? The claim fees should have been paid before the restriction requirement was issued, so if you withdraw some claims (as long as you don't add other claims), your total claim count will match the claims for which fees have already been paid.

[ThomasPaine]

MPEP 806.04(e) - Claims are not species.

Identifying the claims as species is incorrect.  The requirement is improper and must be withdrawn.

That's all you need to respond with.  The examiner of course will come back with some nonsense.  Then you file your petition.  There is no fee for a Rule 144 petition, but you must file it not later than a Notice of Appeal.

So make an election.  Traverse the requirement.  When you get a final rejection, file an after final response and include your Rule 144 petition.  Then call the SPE and/or TC Director frequently and ask, "When is my petition going to be granted?"

[Robert K S]

... or having to pay excess claims fees to have such claims examined.

I'm not following this statement.

It's sort of a classic scenario.  Suppose the application is filed with twenty claims, three of which are independent, and thus no excess claims fees are required.  Examiner issues a species restriction requiring withdrawal of, say, ten dependent claims.  Applicant wants his or her money's worth and wants twenty claims examined, goshdarnit, and so adds ten new claims believed to fall within the elected species, but does not cancel the restricted and withdrawn ten claims.  Because the old claims are not canceled, and because the total number of claims is now thirty, Examiner charges excess claims fees for the ten new claims.

Applicant can petition.  Applicant will lose the petition.  Been there.  Done that.

[Robert K S]

MPEP 806.04(e) - Claims are not species.  Identifying the claims as species is incorrect.  The requirement is improper and must be withdrawn.  That's all you need to respond with.  The examiner of course will come back with some nonsense.  Then you file your petition.

A losing petition, unfortunately.  According to original post, Examiner properly identified the species.  One can argue they're not proper species; one can argue Rule 141(a); but MPEP 806.04(e) does not provide anything of substance to argue, because the basis of the restriction is not a non-species claim distinction.

[jeff.oneill]

When I've received unreasonable restriction requirements, I've called the examiner, and the examiner is often more reasonable on the phone and you can come to a compromise.

[Robert K S]

Adding to what I said above, when I say "the Examiner properly identified the species," I'm assuming that the hypothetical version of the facts takes a few liberties.  As set forth, there's no independence or distinctness between a Phillips-head screw, a steel screw, and a one inch screw, as a screw can be any or all of those things (nothing requires a Phillips-head screw to be less than one inch, or made of something other than steel etc.).  If the real facts track the hypo closely, and no true species are identified in the restriction requirement, then that's something that can be argued.

[ThomasPaine]

"A losing petition, unfortunately."

Wrong.

"According to original post, Examiner properly identified the species."

Wronger.

[fewyearsin]

"A losing petition, unfortunately."

Wrong.

"According to original post, Examiner properly identified the species."

Wronger.

A couple things:
- file the petition as soon as the Restriction is made final.  Your clock doesn't stop, and the petition can take forever.  As mentioned above, follow up to get the status of the petition at regular intervals.
- these petitions can be granted, it is highly fact/case specific.  Be as clear and detailed as you can as to why the restriction was improper.  Form paragraphs from your firm's repository won't win the day.
- although the examiner identified "species," did the examiner really show that it would be a burden to search each species?  Are the species really so different?  If the species are not mutually exclusive, you have a good shot at winning, which at least means a new, more clear restriction, though best case it is fully withdrawn.
- look at what the MPEP requires the examiner to set forth.  If the examiner just clicked through the form paragraphs when making the restriction, he will have missed some key explanations that are required.

Best of luck.

[MR]

If the species are not mutually exclusive, you have a good shot at winning

Do you read 806.04(f) to require that the species be mutually exclusive?  I wouldn't read it that way - it seems to me that 806.04(f) is silent regarding the case in which the species are not mutually exclusive.

[fewyearsin]

If the species are not mutually exclusive, you have a good shot at winning

Do you read 806.04(f) to require that the species be mutually exclusive?  I wouldn't read it that way - it seems to me that 806.04(f) is silent regarding the case in which the species are not mutually exclusive.

Regardless how I read it, the PTO does not seem to require mutual exclusivity.  But, if the species are mutually exclusive, the examiner has a very strong argument for search burden.  Without that, the added burden is often not very much (additional search terms, but not completely new/additional searches).

Also focus on any conclusory statements by the examiner.  The MPEP requires the Office to provide enough detail in an Action to put the Applicant on notice (see MPEP 2103(VI), 2141(V), for example, though 2173.02(III)(A) has a good statement, if not directly on point for restrictions, that "the examiner should clearly communicate in an Office action any findings and reasons which support the rejection and avoid a mere conclusion that the claim term or phrase in indefinite," also 707.07(g), also not directly on point with restrictions, but "Where a non-prior art ground of rejection is proper, it should be stated with a full development of reasons rather than by a mere conclusion coupled with a boiler plate expression"). <- regarding that last quote, I love that the MPEP specifically cautions examiners against just relying on boiler plate, since that is largely what ends up happening in practice.  So if your restriction is just a list of species followed by bare boiler plate, you have a shot at getting it redone or withdrawn.