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Sanaa T...
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When faced with an obviousness type double patenting rejection, there are three ways to respond: (1) Remind the examiner that the rejection is only a provisional obviousness type double patenting rejection, and that the applicant chooses to wait until the claims are allowed, before filing a terminal disclaimer; (2) File a terminal disclaimer right away; and Or (3) Amend the claims to further distinguish between the two claim sets.
A restriction requirement indicates that the Examiner believes there are more than one invention in the application which are patentably distinct from each other.
The Examiner will provide a list of "groups" which represent the different inventions, and will indicate why he thinks they are distinct from each other. These groups may be defined by listing groups of claims, or by referring to figures in the drawing (in which case you will have to identify the claims which represent each group).
Since the rule is, "one invention to a patent", you will have to elect one invention to proceed with. The claims directed to that invention will be examined, and the claims directed to the other invention(s) will be withdrawn from consideration.
You can file "Divisional" applications to pick up the withdrawn claims at any time until the application issues. Filing a divisional basically entails re-filing the same application with just the claims you didn't elect in the original case.
An election of species is similar to a restriction requirement, in that you will have to choose one claim or group of claims to be examined. The difference is that in an election of species, the Examiner believes that it is possible that the claims in the application would cover more than one variation ("species") of a single invention. If a "generic" claim (one which covers more than one species) is allowed as a result of the examination process, then other unelected species which would be covered by that generic claim would also be allowed.
If there are no claims which are "generic", you'll need to file a "divisional" patent application covering the non-elected species, just as in the restriction requirement.
While you can argue against the restriction requirement or election, you must still make an election in your response even if you think the requirement is completely inappropriate.
You should realize that while Examiners will sometimes compromise on the number or arrangement of groups in a restriction or election of species, if provided with sufficiently convincing arguments, they will almost never back down and withdraw the election. It is possible to file a petition to have the requirement withdrawn, as well, but these are not often granted.
The title of the document should follow the heading. The most common response to an Office Action is an Amendment which makes changes to the application. If no changes are made and only an argument is presented, the document should be titled Request for Reconsideration.
The first part is a listing of the contents of the response followed by the page number on which that part begins. Next is the amendment to the specification, followed by amendments to the claims, and amendments to the drawings. The last section is the remarks section in which the author
comments upon the amendments being made and presents arguments as to why the claims as amended are patentable. Corrected drawings or other documents may be attached to the response as an appendix.
EXAMPLE (first part, listing of contents)
Amendments to the Specification begin on page 2 of this paper.
Amendments to the Claims are reflected in the listing of claims which begins on page 4 of this paper.
Amendments to the Drawings begin on page 8 of this paper.
Remarks/Arguments begin on page 10 of this paper.
An Appendix including amended drawing figures is attached following page 15 of this paper.
It is not always necessary to make all the amendments listed in the example or to attach documents as an appendix. The parts which are not needed should be omitted. Nothing should be said about any part that is not contained in the response.
The amendment to the specification (if any) occurs first. The amendment to the specification should absolutely refer to the page and line where the amendment is to occur. Individual words, sentences or paragraphs could be added or deleted. However, new matter cannot be added to a patent application.
The current procedure requires that the entire paragraph containing a change be reproduced using underlining to indicate words being added. Strike-through font must be used to indicate words that are over
five consecutive characters are being deleted. Double brackets can be used to indicate words of five letters or less are being deleted. Since it is often difficult to see the deletion of a period or comma using the strike-through font, deletion of such characters should be made using double brackets.
Whereas the first portion of the response is an amendment giving specific instructions as to what is actually changed in the specification and claims via the amendment, the "Remarks" section is a discussion of why each amendment was made and is responsive to the requirements and rejections made by the Examiner.
A separate paragraph should respond to each and every point raised by the Examiner.
EXAMPLE
REMARKS
This is in response to the Office Action dated July 30, 1993. A one month extension of time and the required fee are being filed herewith.
B. Response to Rejections In drafting a response to the Examiner's rejections, brevity is important. Use short declarative sentences written in the active voice. If claims have been cancelled there is usually no benefit in stating why they were cancelled.
Cancelled claims are no longer in the application so neither you nor the Examiner should say anything about them other than that they have been cancelled. In most Office Actions there is a formal matter rejection (35 U.S.C. § 112) and prior art rejections (35 U.S.C. § 102 or 35 U.S.C. § 103). In each case, an amendment of the claims
will be made to overcome the rejections.
In addressing a prior art rejection the usual approach is to write a paragraph or a few sentences summarizing the teaching of the reference. Then point out the difference between the claimed invention and the reference.
The response should conclude with a salutation such as is used in a business letter or brief. The practitioner's name, Registration No., and telephone number should always be included.
If a fee is required for adding claims a paragraph should note this fact.
Just because the Examiner has made the rejections "final" does not mean that they are really final. The declaration of finality just restricts your options in how you can respond to the rejections.
You can respond to a final rejection in one or more of these ways:
a) If some claims have been allowed, amend or cancel the remaining claims to obtain an allowance.
b) File a Request for Reconsideration with the Examiner explaining why the final rejection was based on faulty reasoning.
c) Request an interview with the Examiner as soon as possible to explain the issues, and perhaps to negotiate changes to the claims which would satisfy the Examiner. You can make that request in a telephone call to the Examiner, and most Examiners are happy to grant interviews.
d) File an appeal to the Board of Patent Appeals.
e) File a Request for Continued Examination (RCE), continuation or continuation-in-part (CIP) application with an amendment to better focus the claims
If you do not choose any of these, the application will become abandoned.
If you have not done so already, this is a very good time to consult with a patent professional (preferably contact PatentExpress.com).
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