How to Respond to Office Action on "Subject to restriction and/or election requirement?

[Tony Martiloni]

Just got an office action from the examiner on my patent application under
the disposition of "claims are subject to restriction and/or election
requirement."

He asked me to elect a single disclosed species for prosecution on the
merits to which the claims shall be restricted if no generic claim is
finally held be allowable. He said currently no claim is generic (under 35
U.S.C. 121).

Probably I should not have included several different embodiments of the
mechanisms in the claims. there are several variants of same parts. The
examiner may think they are distinct species.

What would be the best strategy for me to respond to his requests?

(1) Elect one independent claim and the dependent claims under it and
abandon the remaining independent claims (there are four independent claims
in this patent).

(2) Elect one independent claim and the dependent claims under it, then
later take the remaining independent claims as divisions of the patent? What
is the time frame for filing a division patent?

(3) Rewrite some of the claims (the examiner said that parts that are not
interchangeable are distinct species).

Any advice will be appreciated.

Tony

[Steve Marcus]

Post by Tony Martiloni
Just got an office action from the examiner on my patent application under
the disposition of "claims are subject to restriction and/or election
requirement."
He asked me to elect a single disclosed species for prosecution on the
merits to which the claims shall be restricted if no generic claim is
finally held be allowable. He said currently no claim is generic (under 35
U.S.C. 121).
Probably I should not have included several different embodiments of the
mechanisms in the claims. there are several variants of same parts. The
examiner may think they are distinct species.
What would be the best strategy for me to respond to his requests?
(1) Elect one independent claim and the dependent claims under it and
abandon the remaining independent claims (there are four independent
claims in this patent).
(2) Elect one independent claim and the dependent claims under it, then
later take the remaining independent claims as divisions of the patent?
What is the time frame for filing a division patent?
(3) Rewrite some of the claims (the examiner said that parts that are not
interchangeable are distinct species).
Any advice will be appreciated.

Presumably, the examiner identified the species from which you are required
to elect, for example, the species of Figure 1, the species of Figure 2,
etc. Sometimes, the species are identified by description, for example, the
species in which the widget has only teeth on its edges, the species in
which the edges of the widget are smooth, the species in which the widget is
smooth on one edge and has teeth on the other edges, etc. You have three
choices:

A. Pick one of the species identified by the examiner and list all claims
that read on (i.e., describe) that species.

B. Amend the claims so that all claims are either generic (read on, and
encompass the entire organization of) all of the species, and state that you
have done that and that there are no "species claims" left.

C. Amend the claims (which may include canceling some claims) to leave only
generic claims and claims to a single species of the invention. Again, you
state to the examiner that you have elected that species and now only
present claims that are on
generic or limited to that single species.

Even if you disagree with the examiner (because you think that the species
aren't patentably distinct, or because you don't think that there are any
claims limited to a single species), you must still elect as per one of A-C.
NOTA BENE: the only proper traverse (statement of disagreement with) an
election of species that **properly identifies species that are claimed**,
is a concession that the species are not patentable over each other. That
means that if you disclosed and claimed three species, and then argue that
you shouldn't have to elect only one because the species are not patentable
over each other, the examiner need only find a reference for one of the
three species. If s/he does, then your traverese can be used to reject the
other two species over that single reference.

In general, you might want to read about election of species requirements
and the practice of responding thereto:

http://www.uspto.gov/web/offices/pac/mpep/documents/0800.htm

Steve

[Tony Martiloni]

Thanks, Steve. Your explanations helped me to decide how to make the nest
strategy to respond to the OA.

I shouldn't have included so many different variations of the mechanism in
one patent. I now realize that some of them are indeed distinct. I would
like to select one species and later file a divisional application for the
species not selected.

Now, I have another question. If I have 6 figure in the application. The
examiner picked 3 figures as distinct. If I elect the first figure of the 3
species for examination, will the other two figures of the 3 not appear in
the application? In other words, if I elect one figure of the 3, there will
be 4 total figures in the application (one figure elected and 3 that the
examiner did not disagree).

Thanks,

Tony


------------------------------------------------

Post by Steve Marcus
A. Pick one of the species identified by the examiner and list all claims
that read on (i.e., describe) that species.
B. Amend the claims so that all claims are either generic (read on, and
encompass the entire organization of) all of the species, and state that
you have done that and that there are no "species claims" left.
C. Amend the claims (which may include canceling some claims) to leave
only generic claims and claims to a single species of the invention.
Again, you state to the examiner that you have elected that species and
now only present claims that are on
generic or limited to that single species.
Even if you disagree with the examiner (because you think that the species
aren't patentably distinct, or because you don't think that there are any
claims limited to a single species), you must still elect as per one of
A-C. NOTA BENE: the only proper traverse (statement of disagreement with)
an election of species that **properly identifies species that are
claimed**, is a concession that the species are not patentable over each
other. That means that if you disclosed and claimed three species, and
then argue that you shouldn't have to elect only one because the species
are not patentable over each other, the examiner need only find a
reference for one of the three species. If s/he does, then your traverese
can be used to reject the other two species over that single reference.
In general, you might want to read about election of species requirements
http://www.uspto.gov/web/offices/pac/mpep/documents/0800.htm
Steve
--
The above posting is neither a legal opinion nor legal advice,
because we do not have an attorney-client relationship, and
should not be construed as either. This posting does not
represent the opinion of my employer, but is merely my personal
view. To reply, delete _spamout_ and replace with the numeral 3

Tony

[Steve Marcus]

Post by Tony Martiloni
Thanks, Steve. Your explanations helped me to decide how to make the nest
strategy to respond to the OA.
I shouldn't have included so many different variations of the mechanism in
one patent. I now realize that some of them are indeed distinct. I would
like to select one species and later file a divisional application for the
species not selected.
Now, I have another question. If I have 6 figure in the application. The
examiner picked 3 figures as distinct. If I elect the first figure of the
3 species for examination, will the other two figures of the 3 not appear
in the application? In other words, if I elect one figure of the 3, there
will be 4 total figures in the application (one figure elected and 3 that
the examiner did not disagree).

All of the drawing figures, and all of the disclosure in the specification,
will remain in any patent issued on the elected species, unless *you* choose
to cancel them.

Election of a single species, followed by a successful prosecution of the
application on your behalf, will result in a patent that will contain claims
limited to the elected species, and that may contain both claims that are
subgeneric the elected species and other species (claims that "read on" the
elected species and some of the other nonelected species), and claims that
are generic (claims that "read on" all of the disclosed species). In other
words, claims limited to nonelected species and claims that do not read on
the elected species will be required to be canceled (but see * below), but
you need not cancel any of the supporting disclosure in the spec or any
drawing figures.

*If a generic claim is allowed, the examiner should permit you to also
include claims to the nonelected species, provided that those species claims
contain all of the limitations of the generic claim. In fact, the examiner
should advise you that you should provide those species claims back into the
application, if they have already been canceled. Ditto with respect to
subgeneric claims that "read on" the elected species. You would be free to
file divisionals on the nonelected species in an attempt to get broader
coverage for them. In general, see:

http://www.uspto.gov/web/offices/pac/mpep/documents/0800_821_04_a.htm#sect821.04a

and in particular, the second sentence thereof. Also note form paragraph
8.45 (provided for the examiner to use in his/her actions), and see also the
form paragraphs linked in note 2 to the form paragraph.

Post by Tony Martiloni
Thanks,
Tony

<snip>

Steve

[Tony Martiloni]

Thank, Steve. Your clear explanations will help me to respond to the
examiner's requests.

Tony

Post by Steve Marcus

Post by Tony Martiloni
Thanks, Steve. Your explanations helped me to decide how to make the nest
strategy to respond to the OA.
I shouldn't have included so many different variations of the mechanism
in one patent. I now realize that some of them are indeed distinct. I
would like to select one species and later file a divisional application
for the species not selected.
Now, I have another question. If I have 6 figure in the application. The
examiner picked 3 figures as distinct. If I elect the first figure of the
3 species for examination, will the other two figures of the 3 not
appear in the application? In other words, if I elect one figure of the
3, there will be 4 total figures in the application (one figure elected
and 3 that the examiner did not disagree).

All of the drawing figures, and all of the disclosure in the
specification, will remain in any patent issued on the elected species,
unless *you* choose to cancel them.
Election of a single species, followed by a successful prosecution of the
application on your behalf, will result in a patent that will contain
claims limited to the elected species, and that may contain both claims
that are subgeneric the elected species and other species (claims that
"read on" the elected species and some of the other nonelected species),
and claims that are generic (claims that "read on" all of the disclosed
species). In other words, claims limited to nonelected species and claims
that do not read on the elected species will be required to be canceled
(but see * below), but you need not cancel any of the supporting
disclosure in the spec or any drawing figures.
*If a generic claim is allowed, the examiner should permit you to also
include claims to the nonelected species, provided that those species
claims contain all of the limitations of the generic claim. In fact, the
examiner should advise you that you should provide those species claims
back into the application, if they have already been canceled. Ditto with
respect to subgeneric claims that "read on" the elected species. You
would be free to file divisionals on the nonelected species in an attempt
http://www.uspto.gov/web/offices/pac/mpep/documents/0800_821_04_a.htm#sect821.04a
and in particular, the second sentence thereof. Also note form paragraph
8.45 (provided for the examiner to use in his/her actions), and see also
the form paragraphs linked in note 2 to the form paragraph.

Post by Tony Martiloni
Thanks,
Tony

<snip>
Steve
--
The above posting is neither a legal opinion nor legal advice,
because we do not have an attorney-client relationship, and
should not be construed as either. This posting does not
represent the opinion of my employer, but is merely my personal
view. To reply, delete _spamout_ and replace with the numeral 3

[Peter Olcott]

You might also be able to derive a generic linking claim that links all the
species together, that way you can get everything in the same patent. The key is
to write this claim such that it both gets past prior art, and is generic to all
of your species. You can then further qualify this claim with dependent claims
that specify the details of each species. Also you can write other independent
claims for these species that are written up as further qualifications of the
generic claim.

Post by Tony Martiloni
Thank, Steve. Your clear explanations will help me to respond to the
examiner's requests.
Tony

Post by Steve Marcus

Post by Tony Martiloni
Thanks, Steve. Your explanations helped me to decide how to make the nest
strategy to respond to the OA.
I shouldn't have included so many different variations of the mechanism in
one patent. I now realize that some of them are indeed distinct. I would
like to select one species and later file a divisional application for the
species not selected.
Now, I have another question. If I have 6 figure in the application. The
examiner picked 3 figures as distinct. If I elect the first figure of the 3
species for examination, will the other two figures of the 3 not appear in
the application? In other words, if I elect one figure of the 3, there will
be 4 total figures in the application (one figure elected and 3 that the
examiner did not disagree).

All of the drawing figures, and all of the disclosure in the specification,
will remain in any patent issued on the elected species, unless *you* choose
to cancel them.
Election of a single species, followed by a successful prosecution of the
application on your behalf, will result in a patent that will contain claims
limited to the elected species, and that may contain both claims that are
subgeneric the elected species and other species (claims that "read on" the
elected species and some of the other nonelected species), and claims that
are generic (claims that "read on" all of the disclosed species). In other
words, claims limited to nonelected species and claims that do not read on
the elected species will be required to be canceled (but see * below), but
you need not cancel any of the supporting disclosure in the spec or any
drawing figures.
*If a generic claim is allowed, the examiner should permit you to also
include claims to the nonelected species, provided that those species claims
contain all of the limitations of the generic claim. In fact, the examiner
should advise you that you should provide those species claims back into the
application, if they have already been canceled. Ditto with respect to
subgeneric claims that "read on" the elected species. You would be free to
file divisionals on the nonelected species in an attempt to get broader
http://www.uspto.gov/web/offices/pac/mpep/documents/0800_821_04_a.htm#sect821.04a
and in particular, the second sentence thereof. Also note form paragraph
8.45 (provided for the examiner to use in his/her actions), and see also the
form paragraphs linked in note 2 to the form paragraph.

Post by Tony Martiloni
Thanks,
Tony

<snip>
Steve
--
The above posting is neither a legal opinion nor legal advice,
because we do not have an attorney-client relationship, and
should not be construed as either. This posting does not
represent the opinion of my employer, but is merely my personal
view. To reply, delete _spamout_ and replace with the numeral 3