restriction requirement response 3 strategies

Three Strategies

for Minimizing Cost and Delay in Restriction and Election Practice in the USPTO

(using Scenarios 1 through 5)

Assumptions

1. Some PTO examiners will not exercise discretion in our favor.

2. Some PTO examiners perceive that they have the moral high ground.

Assumptions



3. Some PTO examiners recognize that petition and appeal practice is unfamiliar to many practitioners and too costly for many clients.

4. It is not certain that a meritorious petition or appeal will get a proper response at the PTO.

Assumptions



3. Some PTO examiners recognize that petition and appeal practice is unfamiliar to many practitioners and too costly for many clients.

4. It is not certain that a meritorious petition or appeal will get a proper response at the PTO.

5. If we have to file petitions and appeals, we want to be in the best possible position to do so.

6. We also want few claims to be withdrawn from consideration, if any, even while petitions and appeals are pending.

Assumptions

41. (ORIGINAL) A medical system comprising:a first module configured to do some really important stuff; anda second module operably coupled to the first module and configured to do other stuff.

42. (ORIGINAL) The medical system of claim 41 in which the first module comprises:a first dispenser operably coupled with at least the first module.

43. (ORIGINAL) The medical system of claim 41 in which the first module comprises:more than one dose of a first therapeutic material within the second module.

44. (ORIGINAL) The medical system of claim 41 in which the first module comprises:a second dispenser.

45. (ORIGINAL) The medical system of claim 41 in which the first module comprises:a support element operable for supporting the second module.

46. (ORIGINAL) The medical system of claim 41, further comprising:the second module configured to do the other stuff over a period of more than a day.

Applicant is required to elect one of the following patentably distinct species:

Species A: having a first dispenserSpecies B: having more than one doseSpecies C: having a second dispenserSpecies D: having a support elementSpecies E: having a second module

The species are independent or distinct because claims to the different species recite the mutually exclusive characteristics of such species . . . .

[To be complete,] the reply to this requirement must include …

(i) an election of a species to be examined even though the requirement may be traversed; and

(ii) identification of the claims encompassing the elected species, including any claims subsequently added.


How is that “mutually exclusive”?

Scenario #1 Species A: having a first dispenserSpecies B: having more than one doseSpecies C: having a second dispenserSpecies D: having a support elementSpecies E: having a second module


“Grudging Cooperation”




I elect Species A, but WITH

TRAVERSE!!!





TRAVERSE!!!




TRAVERSE!!!

All claims are

readable on

Species A.




TRAVERSE!!!

All claims are

readable on

Species A.

Claims 43-46 are drawn to non-elected

species

Scenario #1



TRAVERSE!!!

All claims are

readable on

Species A.

… and withdrawn

from consideration.

Claims 43-46 are drawn to non-elected

species

Scenario #1


4 Applicant respectfully calls the Examiner’s attention to this portion of the MPEP:

Where two or more species are claimed, a requirement for restriction to a single species may be proper if the species are mutually exclusive. Claims to different species are mutually exclusive if one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second species and not the first. This may also be expressed by saying that to require restriction between claims limited to species, the claims must not overlap in scope.

MPEP 806.04 (f) (emphasis added). The Examiner has indicated that species A through E of the present Restriction Requirement do not overlap, for example, but has not supported this view with any evidence or coherent explanation. Applicants accordingly request withdrawal of the present Restriction Requirement.

Scenario #2

“Overt Aggression”



Scenario #2It’s not

possible for us to choose among these

“Species.”






“Species.”



Scenario #2

Applicant’s“response” is

unresponsive.

It’s not possible for

us to choose among these

“Species.”


Scenario #2


unresponsive.

It’s not possible for

us to choose among these

“Species.”


Comply or go

abandoned.

Strategy A: Picture Claims(narrow independent or dependent claims, often not commercially valuable,

combining phrases of many dependent claims)


46. (ORIGINAL) The medical system of claim 41, further comprising:the second module configured to do the other stuff over a period of more than a day.

47. (NEW) The medical system of claim 46 in which the first module comprises:a first dispenser operably coupled with at least the first module;more than one dose of a first therapeutic material within the second module;a second dispenser; anda support element operable for supporting the second module.

Scenario #3



Scenario #3

We elect all five“Species.”



Scenario #3



Arg #1...

Arg #99


Scenario #3



Arg #1...

Arg #99

Claim 47 proves that the “Species” may

overlap.


46. (ORIGINAL) The medical system of claim 41, further comprising:a second module, operable to remain at least partly within an esophagus or intestine of the digestive or respiratory tract for more than a day.


Scenario #3



Arg #1...

Arg #99


overlap.

Hmmm …

Scenario #3



Arg #1...

Arg #99


overlap.

Hmmm …For no additional time or trouble, I have an opportunity to teach this rich clown some

respect.

Scenario #3


unresponsive.



Arg #1...

Arg #99


overlap.

Scenario #3


unresponsive.



Comply or go

abandoned.

Arg #1...

Arg #99


overlap.

“Partial Aggression”


Strategy B: Partial Aggression(giving the Examiner an opportunity to save face and appear to win something even while reinforcing

the message that the Restriction Requirement wasn’t worth the trouble)

Scenario #4



Scenario #4We

provisionally elect

“Species” A – C.



Scenario #4We

provisionally elect



If that’s too many, please call us to discuss

and explain.


Scenario #4We

provisionally elect




and explain.

This election is valid only if it

will result in claim 47 being

examined.




Scenario #4We

provisionally elect




and explain.



examined. Possible Response

Hmmm …

OnePossible

Response

Scenario #4We

provisionally elect




and explain.




Hmmm …At least I can tell my

SPE that we excluded two species. And we

can’t win on petition…

OnePossible

Response

Scenario #4We

provisionally elect




and explain.




Hmmm …At least I can tell my

SPE that we excluded two species. And we

can’t win on petition…

OnePossible

Response

Accept the election and

examine claims 41-44,

and 46-47

Scenario #4We

provisionally elect




and explain.



examined. AnotherPossible

Response

Scenario #4


unresponsive.

We provisionally

elect “Species”

A – C.


Comply or go

abandoned.


and explain.




Response

Scenario #4


unresponsive.

We provisionally

elect “Species”

A – C.


Comply or go

abandoned.


and explain.




Response

Telephone Interview

Scenario #4We

provisionally elect




and explain.




Response

But, at that telephone interview …

Scenario #4You tried

to draft around my Restriction Requirement.

We provisionally

elect “Species”

A – C.



and explain.




Response



We provisionally

elect “Species”

A – C.



and explain.




Response

To have claim 47

examined you must file an RCE.



We provisionally

elect “Species”

A – C.


To have claim 47

examined you must file an RCE.


and explain.




Response

Strategy B: Partial Aggression(giving the Examiner an opportunity to save face and appear to win something even while reinforcing

the message that the Restriction Requirement wasn’t worth the trouble)

Strategy C: Proactivity(filing early picture claims to preempt any notion that the

Examiner’s Restriction Requirement deserves respect)

Scenario #5

not “NEW”


47. (PREVIOUSLY PRESENTED) The medical system of claim 46 in which the first module comprises:a first dispenser operably coupled with at least the first module;more than one dose of a first therapeutic material within the second module;a second dispenser; anda support element operable for supporting the second module.



Hypothetical Response



“Well Positioned”Hypothetical Response



“Well Positioned”

Golly,we mainly just

wanted to get at least claim 47

examined.Hypothetical Response

Scenario #5

“Well Positioned”

Hmmm …Next time we see

these picture claims, let’s not bother with a

Restriction Requirement.

AnotherPossible

Response

Hypothetical Response

Strategy C: Proactivity(filing early picture claims to preempt any notion that the


Proactivity(filing early picture claims to preempt any notion that the


Partial Aggression(giving the Examiner an opportunity to save face and appear to win something even while

reinforcing the message that the Restriction Requirement wasn’t worth the trouble)

Picture Claims(narrow independent or dependent claims, often not commercially

valuable, combining phrases of many dependent claims)

What’s a “species”?

What’s a “species”? Species A: having a first dispenserSpecies B: having more than one doseSpecies C: having a second dispenserSpecies D: having a support elementSpecies E: having a second module

What’s a “species”? Species A: having a first dispenserSpecies B: having more than one doseSpecies C: having a second dispenserSpecies D: having a support elementSpecies E: having a second module

a species

When is a restriction requirement or species election proper?

a species

When is a restriction requirement or species election proper?

When there truly is no overlap

between claimed

combinations

Are these truly mutually exclusive?

“treating a disease

state”“… affecting

a reptile”

“… affecting a human”

???


“an identifier

of a pathogen” “… wherein

the pathogen is a

bacterium”“… wherein the pathogen is a virus”

???


“implementing a therapeutic

regimen” “… by a surgical

procedure”“… without any surgery”

???

Petition Practice Points

1. Decisions of an examiner that are of a discretionary, procedural, or non-substantive nature and that are not directly connected with the merits of issues involving rejections of claims are typically reviewable by petition under 37 C.F.R. § 1.181.

2. Response due dates remain in effect irrespective of a petition.

3. I recommend that you traverse election of species requirements with care.

4. I recommend that you do not cancel claims that the Examiner has withdrawn from consideration, at least not until the RR is made final.

5. You must request reconsideration of the RR to qualify for petition.

6. A petition must be made (a) after the RR is repeated or made final and (b) before filing an appeal.

7. Most petitions for RR are granted in full or in part in ~ 90 days. (Nevertheless, less than 1% of RR’s are petitioned.)

Petition Practice Points

restriction requirement response 3 strategies

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