Restriction
From Patentbarquestions
Q) Restriction (4.00.9a)
9. A non-final Office action contains, among other things, a restriction requirement between
two groups of claims, (Group 1 and Group 2). Which of the following, if included in a timely
reply under 37 C.F.R. § 1.111, preserves applicant’s right to petition the Commissioner to
review the restriction requirement?
- I. Applicant’s entire reply to the restriction requirement is: “The examiner erred in
- distinguishing between Group 1 and Group 2, and therefore the restriction
- requirement is respectfully traversed and no election is being made, in order that
- applicant’s right to petition the Commissioner to review the restriction
- requirement is preserved.”
- II. Applicant’s entire reply to the restriction requirement is: “Applicant elects
- Group 1 and respectfully traverses the restriction requirement, because the
- examiner erred in requiring a restriction between Group 1 and Group 2.”
- III. Applicant’s reply distinctly points out detailed reasons why applicant believes the
- examiner erred in requiring a restriction between Group 1 and Group 2, and
- additionally sets forth, “Applicant therefore respectfully traverses the restriction
- requirement and no election is being made, in order that applicant’s right to
- petition the Commissioner to review the restriction requirement is preserved.”
- IV. Applicant’s reply distinctly points out detailed reasons why applicant believes
- the examiner erred in requiring a restriction between Group 1 and Group 2, and
- additionally sets forth, “Applicant therefore respectfully traverses the restriction
- requirement and elects Group 2.
(A) I.
(B) II.
(C) III.
(D) IV.
(E) None of the above.
9. ANSWER: (D). 37 C.F.R. § 1.111(b); MPEP §§ 818.03(a)-(c).
(I) is incorrect since the traversal does not distinctly point out the supposed errors in the examiner’s action,
and no election is made. 37 C.F.R. § 1.143. (II) is incorrect since the traversal does not distinctly point
out the supposed errors in the examiner’s action. (III) is incorrect since no election is made. (E) is incorrect
because (D) is correct.
Q) Smartner’s Cell Phone (4.02.22p)
22. Patentee, Iam Smarter, filed and prosecuted his own nonprovisional patent application on November 29, 1999,
and received a patent for his novel cellular phone on June 5, 2001. He was very eager to market his invention
and spent the summer meeting with potential licensees of his cellular phone patent. Throughout the summer of
2001, all of the potential licensees expressed concern that the claim coverage that Smarter obtained in his
cellular phone patent was not broad enough to corner the market on this technology, and therefore indicated to
him that they feel it was not lucrative enough to meet their financial aspirations. By the end of the summer,
Smarter is discouraged. On September 5, 2001, Smarter consults with you to find out if there is anything he
can do at this point to improve his ability to market his invention. At your consultation with Smarter, you
learn the foregoing, and that in his original patent application, Smarter had a number of claims that were
subjected to a restriction requirement, but were nonelected and withdrawn from further consideration. You also
learn that Smarter has no currently pending application, that the specification discloses Smart’s invention
more broadly than he ever claimed, and that the claims, in fact, are narrower than the supporting disclosure
in the specification. Which of the following will be the best recommendation in accordance with proper USTPO
practice and procedure?
- (A) Smarter should immediately file a divisional application under 37 CFR 1.53(b)
- including the nonelected claims that were subjected to a restriction requirement
- in the nonprovisional application that issued as the patent.
- (B) Smarter should file a reissue application under 35 U.S.C. § 251,
- including the nonelected claims that were subjected to the restriction requirement
- in the nonprovisional application that issued as the patent.
- (C) Smarter should file a reissue application under 35 U.S.C. § 251, broadening the scope of
- the claims of the issued patent, and then file a divisional reissue application presenting
- only the nonelected claims that were subjected to a restriction requirement in the nonprovisional
- application which issued as the patent.
- (D) Smarter should simultaneously file two separate reissue applications under 35 U.S.C. § 251,
- one including broadening amendments of the claims in the original patent, and one including the
- nonelected claims that were subjected to a restriction requirement in the nonprovisional application
- which issued as the patent.
- (E) Smarter should file a reissue application under 35 U.S.C. § 251 on or before June 5, 2003,
- broadening the scope of the claims of the issued patent.
ANSWER The forgotten divisional problem. Iam Smarter is outa luck here.
E is all he’s got left. No recapturing what he failed to file a divisional for
even under the new more flexible reissue approach.
Q) Restriction Requirement / Continuation Application
One had to do with a Continuation of an application where a restriction requirement had been made,
and the applicant had ignored the requirement and filed with all the original claims.
- 804.01 Prohibition of Double Patenting Rejections Under 35 U.S.C. 121
- [...]Note that a restriction requirement in an earlier-filed application does not carry over to claims
- of a continuation application in which the examiner does not reinstate or refer to the restriction requirement
- in the parent application. Reliance on a patent issued from such a continuation application to reject claims
- in a later-filed divisional application is not prohibited under 35 U.S.C. 121.
