|
|
working around election/restriction
Posted by Anonymous . updated on 2/26/2009
I received a restriction/election. The claims are something like this :
Claim 1. A computerised method of valuating the atomic weight of a new product using X,Y,Z and etc.
Claim 2. A computerised exchange method to sell and offer new product comprising:
valuating the atomic weight of a new product;
receiving an offer for new product based on said valuation;
accepting said offer; and
paying for said new product.
The primary examiner basically said that since claim 2 is an exchange then there is a further burden on her, and they are from different classes.
I am wondering if the restriction will still be maintained by deleting claim 2 and add claim 3
Claim 3 The method of claim 1 wherein computer is an exchange to sell and offer said new product.
Or I can?t do anything except delete claim 2. I always find election/restriction a pain in the butt so is it worth traversing it ?
Datuk
Answers (3)
| |
|
JimIvey
|
I'd be inclined to do what you suggested: Elect claim 1 and add new claim 3 in a supplemental/preliminary amendment (not sure which of those is appropriate after a Restriction Requirement).
FWIW, if you have multiple independent claims of the same type (method, machine, etc.) with different preambles, you're effectively inviting a restriction requirement. I don't think that particular restriction requirement is proper, but you lose on the form and win in the substance.
Regards.
|
|
| |
|
Isaac
|
In this case the preamble recites elements that beg for classification into class 705. ? The best argument against such a classification is that the preamble is to be given no weight. ? That probably won't accomplish what you want. ?However, if you add limitations to claim 3 such as those recited in claim 2, you are almost certainly going to get a contructive restriction/election.
As an examiner I was told that documenting a classification search through the 705 sub classes risked having a business method like review process if you allowed the case. ? Examiners who believe those anecdotes are going to be strongly motivated to issue a restriction requirement in cases reciting a 705 type claim mixed with non 705 claims.
|
|
| |
|
JimIvey
|
Just out of curiosity, has there ever been a class in the patent system so like purgatory as class 705? Why should any class be so blatantly singled out for different treatment?
Open note to the USPTO: Just examine the applications, apply the law, and give patents to applicants who deserve them. Stop all the "if class=<disliked class>, then ..." crud.
Regards.
|
|
Related Questions
 |
I was reading an article about a discovery made by a professor. While reading it, I came up with an application of the discovery that could be very successful. What are the approaches that I can use to get m... Read More |
|
This is to clarify a question that I asked earlier. I was reading an article about an invention made by a professor. While reading it, I came up with an application of the invention that could be very succes... Read More |
|
re: patenting an application Given that a technology has become protected under patent, and other, law, can an application of that technology be patented by someone other than the owner of the original techn... Read More |
|
sir, i am a docter,i have done( bams),and now i want to make a helicopter;with the help of some part of motorbike,so is any law which can stop me to do particular work.and 2nd thing i am not using any one''s... Read More |
|
what forms do i need to file a patent Read More |
|
- Patent Express is the fastest and easiest way for an individual inventor to file a U.S. Patent or Trademark Application.
- Patent Express fills the gap for those who cannot afford a U.S. patent attorney or agent, but want to have their patent drafted and issued.
- Patent Express is backed by a 100% money back guarantee.
|