Restriction requirement making it impossible to elect one of the claims

[MR]

We responded to a restriction requirement recently, electing species 1, which, we alleged, encompassed claims 1 and 13 (claim 13 depends from claim 1).  The examiner agreed that claim 1 is in species 1. He withdrew claim 13, alleging that it is in a different species from claim 1, and acknowledged that it was impossible all along for us to elect claim 13 (unless we had amended it or claim 1). 

This seems improper. Is anyone aware of any authority stating that in a restriction requirement each claim must be electable by suitable election of species?

[JV]

We responded to a restriction requirement recently, electing species 1, which, we alleged, encompassed claims 1 and 13 (claim 13 depends from claim 1).  The examiner agreed that claim 1 is in species 1. He withdrew claim 13, alleging that it is in a different species from claim 1, and acknowledged that it was impossible all along for us to elect claim 13 (unless we had amended it or claim 1). 

This seems improper. Is anyone aware of any authority stating that in a restriction requirement each claim must be electable by suitable election of species?

If claim 13 depends from claim 1 as you state, then it will be rejoined upon allowance of claim 1.  The only downside that I can see is that you won't be able to amend claim 1 by incorporating elements of claim 13, if that becomes the best path to allowance of claim 1.  But, if claim 13 really is covering a different species, then it would probably be proper for the examiner to prevent you from doing that anyways, since he/she would not have searched that species (I'm not supporting the current trend of how examiners are using species restrictions to get out of doing their searching job, mind you).

I get these kind of restriction requirements quite often, and my approach has been to go through the claims and identify which species each claim reads on, then elect the species that covers most of the claims.  This is usually the narrowest of species, not the broadest.  This might sound counter-intuitive, but it keeps all of those dependent claims in so that you can narrow the independent to include those features if needed.  You're only telling the examiner which one of the species (that he/she identified, not you) to search - you're still entitled to the claim scope of the broadest claim, unless that search reveals anticipation/obviousness.

[MR]

It seems to me the examiner's course of action cannot be permissible. If claim 13 encompasses the subject matter we particularly want to have examined, we should be able to elect it and have it examined. The examiner has taken the position that claim 13 is in a different species from the claim from which it depends, and therefore we cannot have it examined (regardless of the election made in response to the restriction requirement).

[dbmax]

Hello MR,
If both claims are in the same class (product/method/matter) then I would generally agree with you.

If claim 13 is indefinite, perhaps because of some typographical or gramatical error or just plain indecipherability, then I would expect both claims to be examined, and claim 13 to be rejected under 35 USC 112(a).

On the other hand, if claim 1 is to a product, for example, and claim 13 is to a method of making or using the product, then 13 might be considered independent, regardless of its ostensible dependency on claim 1. Dunno how to argue that.

You appear to have had some communication from the examiner after the election, perhaps to offer you an opportunity to choose another chain of dependent claims to define your election?  If that were so, and if it were clear to me that claim 13 could not be elected with claim 1, then I would jump on the offer.

Having a chain of dependency from claim 1 gives me the best chance of finding something allowable on the first action. My goal would be to get claim 1 in condition for allowance ASAP so as to get claim 13 examined after rejoinder.

But first I would try to get an understanding from the examiner of what it was that made claim 13 problematic.

I'm not an attorney or patent professional of any kind. I dunno squat.

Someone else here might offer more insight.

db 

[mersenne]

Following up on JV's suggestion that an election is (pardoxically) narrower rather than broader, I wonder what would happen if you simply elected claim 13.  If it depends from claim 1, then you'll get examination of both.  The converse is not true: if you elect 1, you wouldn't necessarily get examination of 13 (and in this case, it sounds like the examiner is refusing to examine 13 if you elect 1).

In fact, when faced with an examiner like this, I wonder whether one couldn't simply add a claim chain of independent->dependent->dependent...->dependent, where each dependent is a feature you want to have examined, and then just elect the lowest-level (narrowest) dependent.