restriction requirement response 3 strategies
TRANSCRIPT
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
1. Some PTO examiners will not exercise discretion in our favor.
2. Some PTO examiners perceive that they have the moral high ground.
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
1. Some PTO examiners will not exercise discretion in our favor.
2. Some PTO examiners perceive that they have the moral high ground.
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 We also want few claims to be withdrawn from consideration, if any, even while petitions and appeals are pending.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.
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
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
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
How is that “mutually exclusive”?
“Grudging Cooperation”
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
How is that “mutually exclusive”?
“Grudging Cooperation”
I elect Species A, but WITH
TRAVERSE!!!
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
How is that “mutually exclusive”?
“Grudging Cooperation”
I elect Species A, but WITH
TRAVERSE!!!
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!!!
All claims are
readable on
Species A.
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!!!
All claims are
readable on
Species A.
Claims 43-46 are drawn to non-elected
species
Scenario #1
“Grudging Cooperation”
I elect Species A, but WITH
TRAVERSE!!!
All claims are
readable on
Species A.
… and withdrawn
from consideration.
Claims 43-46 are drawn to non-elected
species
Scenario #1
“Grudging Cooperation”
I elect Species A, but WITH
TRAVERSE!!!
All claims are
readable on
Species A.
… and withdrawn
from consideration.
Claims 43-46 are drawn to non-elected
species
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
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
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.
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
How is that “mutually exclusive”?
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
How is that “mutually exclusive”?
Scenario #2 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
How is that “mutually exclusive”?
Scenario #2
“Overt Aggression”
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
How is that “mutually exclusive”?
Scenario #2It’s not
possible for us to choose among these
“Species.”
“Overt Aggression”
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
How is that “mutually exclusive”?
Scenario #2It’s not
possible for us to choose among these
“Species.”
“Overt Aggression”
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
Scenario #2It’s not
possible for us to choose among these
“Species.”
“Overt Aggression”
Scenario #2
Applicant’s“response” is
unresponsive.
It’s not possible for
us to choose among these
“Species.”
“Overt Aggression”
Scenario #2
Applicant’s“response” is
unresponsive.
It’s not possible for
us to choose among these
“Species.”
“Overt Aggression”
Comply or go
abandoned.
Scenario #2
Applicant’s“response” is
unresponsive.
It’s not possible for
us to choose among these
“Species.”
“Overt Aggression”
Comply or go
abandoned.
Strategy A: Picture Claims(narrow independent or dependent claims, often not commercially valuable,
combining phrases of many dependent claims)
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
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
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
“Overt Aggression”
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
Scenario #3
We elect all five“Species.”
“Overt Aggression”
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
Scenario #3
We elect all five“Species.”
“Overt Aggression”
Arg #1...
Arg #99
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
Scenario #3
We elect all five“Species.”
“Overt Aggression”
Arg #1...
Arg #99
Claim 47 proves that the “Species” may
overlap.
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
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.
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
We elect all five“Species.”
“Overt Aggression”
Arg #1...
Arg #99
Claim 47 proves that the “Species” may
overlap.
Hmmm …
Scenario #3
We elect all five“Species.”
“Overt Aggression”
Arg #1...
Arg #99
Claim 47 proves that the “Species” may
overlap.
Hmmm …For no additional time or trouble, I have an opportunity to teach this rich clown some
respect.
Scenario #3
Applicant’s“response” is
unresponsive.
We elect all five“Species.”
“Overt Aggression”
Arg #1...
Arg #99
Claim 47 proves that the “Species” may
overlap.
Scenario #3
Applicant’s“response” is
unresponsive.
We elect all five“Species.”
“Overt Aggression”
Comply or go
abandoned.
Arg #1...
Arg #99
Claim 47 proves that the “Species” may
overlap.
Scenario #3
Applicant’s“response” is
unresponsive.
We elect all five“Species.”
“Overt Aggression”
Comply or go
abandoned.
Arg #1...
Arg #99
Claim 47 proves that the “Species” may
overlap.
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
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
“Partial Aggression”
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
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
“Partial Aggression”
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
Scenario #4We
provisionally elect
“Species” A – C.
“Partial Aggression”
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
Scenario #4We
provisionally elect
“Species” A – C.
“Partial Aggression”
If that’s too many, please call us to discuss
and explain.
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
Scenario #4We
provisionally elect
“Species” A – C.
“Partial Aggression”
If that’s too many, please call us to discuss
and explain.
This election is valid only if it
will result in claim 47 being
examined.
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
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.
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 #4We
provisionally elect
“Species” A – C.
“Partial Aggression”
If that’s too many, please call us to discuss
and explain.
This election is valid only if it
will result in claim 47 being
examined. Possible Response
Hmmm …
OnePossible
Response
Scenario #4We
provisionally elect
“Species” A – C.
“Partial Aggression”
If that’s too many, please call us to discuss
and explain.
This election is valid only if it
will result in claim 47 being
examined. Possible Response
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
“Species” A – C.
“Partial Aggression”
If that’s too many, please call us to discuss
and explain.
This election is valid only if it
will result in claim 47 being
examined. Possible Response
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
“Species” A – C.
“Partial Aggression”
If that’s too many, please call us to discuss
and explain.
This election is valid only if it
will result in claim 47 being
examined. AnotherPossible
Response
Scenario #4
Applicant’s“response” is
unresponsive.
We provisionally
elect “Species”
A – C.
“Partial Aggression”
Comply or go
abandoned.
If that’s too many, please call us to discuss
and explain.
This election is valid only if it
will result in claim 47 being
examined. AnotherPossible
Response
Scenario #4
Applicant’s“response” is
unresponsive.
We provisionally
elect “Species”
A – C.
“Partial Aggression”
Comply or go
abandoned.
If that’s too many, please call us to discuss
and explain.
This election is valid only if it
will result in claim 47 being
examined. AnotherPossible
Response
Telephone Interview
Scenario #4We
provisionally elect
“Species” A – C.
“Partial Aggression”
If that’s too many, please call us to discuss
and explain.
This election is valid only if it
will result in claim 47 being
examined. AnotherPossible
Response
But, at that telephone interview …
Scenario #4You tried
to draft around my Restriction Requirement.
We provisionally
elect “Species”
A – C.
“Partial Aggression”
If that’s too many, please call us to discuss
and explain.
This election is valid only if it
will result in claim 47 being
examined. AnotherPossible
Response
Scenario #4You tried
to draft around my Restriction Requirement.
We provisionally
elect “Species”
A – C.
“Partial Aggression”
If that’s too many, please call us to discuss
and explain.
This election is valid only if it
will result in claim 47 being
examined. AnotherPossible
Response
To have claim 47
examined you must file an RCE.
Scenario #4You tried
to draft around my Restriction Requirement.
We provisionally
elect “Species”
A – C.
“Partial Aggression”
To have claim 47
examined you must file an RCE.
If that’s too many, please call us to discuss
and explain.
This election is valid only if it
will result in claim 47 being
examined. AnotherPossible
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”
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.
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.
Scenario #5You tried
to draft around my Restriction Requirement.
Hypothetical Response
Scenario #5You tried
to draft around my Restriction Requirement.
“Well Positioned”Hypothetical Response
Scenario #5You tried
to draft around my Restriction Requirement.
“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
Examiner’s Restriction Requirement deserves respect)
Proactivity(filing early picture claims to preempt any notion that the
Examiner’s Restriction Requirement deserves respect)
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”?
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.
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
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.
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”
???
Are these truly mutually exclusive?
“an identifier
of a pathogen” “… wherein
the pathogen is a
bacterium”“… wherein the pathogen is a virus”
???
Are these truly mutually exclusive?
“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
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
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
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