arguing against election/restriction

Jonathan

Just a suggestion - can you perhaps post some specific generics about the restriction? For example, list out the categories as to how the Examiner carved things up - for example a method doing something vs. an apparatus that does the method.

Or is this more a species-type restriction?

Maybe perhaps also clarify 'threw the other half into an election/restriction requirement.' So you need to choose between the two parts or the other half was placed on restriction after you have received some examination of the entire claimset? That sometimes happens - examination of the claims with no restriction and then, after a response, the Examiner decides to restrict some examined claims.

In any event, it seems like you have already decided to traverse. Just carefully, and succinctly, craft your statements as to why you think the Examiner is wrong to impose this restriction and leave it at that.

soxfan

In general you are right, in that it is typically useless to argue against restriction requirements.  In most cases, Examiner's automatically consider arguments against such requirements unpersuasive, maintain the restriction, and move on. 

That said, if you are vehemently opposed to filing a divisional or seeking rejoinder upon the indication of allowable subject matter, you have several options.  Perhaps the least expensive is to conduct an examiner interview, and argue your position to the Examiner over the phone.  It is surprising how much more effective my arguments seem to be when talking with the Examiner directly, as opposed to when they are merely presented on paper.  As an alternative, you can always request an interview with the Examiner's SPE.  This tactic is particularly useful if the Examiner is notoriously difficult (I have dealt with many of them), and you are not particularly worried about maintaining a particularly friendly relationship with an examiner (generally being friendly with an examiner is a better tactic, but not always).  Finally, another option that is available is to petition the Requirement for Restriction to the Director.  If you do this, note that you are not guaranteed to receive a decision on the petition during the time period for responding to the Requirement.  Thus, you must respond to the Requirement to avoid abandonment, even if you have lodged a petition in with the Director.

Good luck. You are facing an uphill road.

ChrisWh...

If the restriction requirement is improper, you can beat it by explaining why it is improper.   A substantial proportion of junior examiners don't know how to handle a good reply by applicant to a bogus restriction requirement and will pass it on to their bosses, many of whom themselves are likely a little stunned when they receive a well-prepared rebuttal.   In a good rebuttal, always include a request that the examiness make the requirement final in the event they do not agree with your posiiton so you can get further review, if you are truly in the right.  Examiners don't get to just restrict at will but must follow a specific set of rules; it's just that many practitioners are confused by restriction practice, as I have heard it can be daunting to some.  That's putting it nicely.   There's few practitioners in my experience who know how to put together a successful rebuttal to a bogus restriction requirement, which are meted out frequently IMO.  If you let these examiners walk all over you, they will make milquetoast.

ME262 is an aircraft, right ?

me262

Thanks for all the kind replies and discussions. Sorry I could not go into the details of the election/restriction case. I did not fight the first election/restriction request. In later examination, the E automatically dumps new element that doesn't conform to his misunderstanding into the election/restriction bin.

Yes, Messerschmitt ME262 is the first jet fighter in the world. It is a damn good invention but did not do much good for the inventor.

ChrisWh...

ME262 - much can be said but in any event was a great invention, better than the british axial design, the German radial ones are those still in use today. 

Overcoming restrictions often means that one needs to make a showing that the examiner does not need to do any additional searching for at least one of a second alleged invention present, in addition to a first, which is elected.

Wiscagent

I received an election / restriction yesterday.  In my experience these actions either explicitly list which claims are in each group, or at least make it clear how the claims are grouped for the election.  This action states that the "application contains claims directed to the following patentably distinct species" and then lists 11 "species", but does not indicate which species corresponds to which claims.  The application has 44 claims.

Most confusingly the groups are defined using terms that are NOT used in the claims.  It looks as though the examiner read the specification, identified separate inventions, and then wrote the election / restriction without ever reading the claims.

I'm going to call the examiner tomorrow, and at a minimum get her define the correspondence between species and claims.  Hopefully I can get her with withdraw or rewrite the election / restriction.  At this point I can't elect a species with traverse, because I don't know what I would be electing.

Any suggestions?

ChrisWh...

I'd need to see it, but the MPEP is specific regarding what needs to be in a restriction requirement.  If the
O/A doesn't meet the MPEP to the extent that it doesn't enable the applicant to advance prosecution, then outlining the reasons why it's deficient and doesn't enable applicant to advance prosecution should in all cases be sufficient grounds for the examiner to at least provide a more definite statement.  My style wouldn't be to use a phone call first, rather hardcopy by fax outlining the reasons, then call the examiness and let her know the fax has been sent and request a call back at her convenience.

Isaac

Quote from: Wiscagent on 05-04-08 at 10:51 pm