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March 20, 2008

Don't Feel So Restricted

From MPEP 802.02: Restriction practice is designed to require applicants to "elect a single claimed invention (e.g., a combination or subcombination invention, a product or process invention, a species within a genus) for examination when two or more independent inventions and/or two or more distinct inventions are claimed in an application."

After speaking recently with a pro se applicant, the reminder bell went off, alerting me once again to the overuse and misuse of restriction requirements as another means for examiners to further "lazy-fy" the system, by reducing the claims examined to a number they deem appropriate. Granted, restriction practice does have some quirks and is often a bit tricky, but the principals are pounded into the apparently un-receptive brains of examiners during 8 months of training academy, and anyone who doesn't get it after 8 months probably isn't intellectually qualified for any career, except maybe ... patent examining .

Applicants must always elect no matter how ridiculous the restriction, but they may traverse the restriction, and traverse they must. Examiners and mis-management must not be allowed yet another method of restricting invention and innovation. Prosecutors must rebel and challenge misuse and misunderstanding by lackadaisical randomly competent examiners. So, go back, re-read MPEP Chapter 800, and break free from the bonds of the overly restrictive PTO.

Posted by Mr. Platinum at March 20, 2008 6:15 AM | Prosecution

Comments

Hmm. Spend the money to traverse the restriction requirement or file a divisional? I'll file the divisional 99% of the time.

Now, if the new rules go into effect, I'll change my mind. Until then, restrictions mean nothing to me.

Posted by: opampman at March 20, 2008 11:02 AM

Here is a restriction trap recently reported over at PatObv: add new matter to the divisional and you lose your statutory rights re: the parent being used as prior art. At least if you call the new application a CIP. Pfizer v. Teva.

"On appeal, the CAFC confirmed that Section 121 does not apply to CIPs: “a divisional application contains an identical disclosure to its parent application, but a CIP introduces new matter. . . . [T]he protection afforded by section 121 . . . is limited to divisional applications.” "

This interpretation of 121 by the CAFC cannot be correct. I agree 121 does not apply to CIPs. But the statute certainly allows one to add new matter to a divisional and still get the benefits of 121. The law says if you choose not to add new matter you don't have to file the declaration. To wit:

"If a divisional application is directed solely to subject matter described and claimed in the original application as filed, the Director may dispense with signing and execution by the inventor." 35 USC 121.

That is a huge IF. There is no other way to interpret this sentence than that the applicant has the option of filing a divisional with new matter and also a declaration, or a divisional w/out new matter and no declaration. Either way its still a divisional and 121 applies. The intent of Congress could not be any clearer.

Adding new matter to divisionals was one of the statutory provisions Dudas was trying to deep-six with the new rules. Looks like the CAFC has done it for him.

Another issue for the new rules was to force the applicant to designate the nature of an application relying on a previous application. (Notice I use the past tense in referring to the new rules.)

Do you have to say: "This is a divisional of ..."? Do you have to designate the statute you rely on for obtaining the priority date?

It appears to me that Pfizer's problem was they didn't call their CIP a divisional. But this should be curable with a reissue.

My understanding is that a divisional should be analyzed like a CIP, the new matter distinguished form the old, and only the old being entitled to the original filing date and protections of 121. But to say no new matter may be added to a divisional is clearly a mis-statement of the law.

Babel Boy

Posted by: Babel Boy at March 20, 2008 11:22 AM

"Hmm. Spend the money to traverse the restriction requirement or file a divisional? I'll file the divisional 99% of the time.

Now, if the new rules go into effect, I'll change my mind. Until then, restrictions mean nothing to me."

I think this is a popular sentiment amongst many, and I don't disagree with it in principle, but I do often traverse restriction requirements for the simple reason that it saves my clients money if I can get the requirement withdrawn.

Divisional application(s) represents 1) another filing fee(s); 2) another issue fee(s); 3) another maintenance fee(s).

If the application can be searched and examined without restriction, I advise clients to fight for it.

For example, I used to represent a client and every set of claims went (gnerally) thusly,

Claim 1. An apparatus comprising a radiation source to generate radiation, an illuminator to shape the radiation into a radiation beam, and a projector to project the radiation beam onto a target portion of a wafer.

Claims 2- 10 dependent apparatus.

Claim 11. A method comprising, generating radiation, shaping the radiation into a radiation beam, and projecting the radiation beam onto a target portion of a wafer.

Claims 12-20 dependent methods.
Invariably I'd get the old, "apparatus and method" restriction.

Sheer laziness as Jordan points out. Please tell me how you're gonna examine claim 1 without examining claim 11, and vise versa.

Puh-leeze.

What's more annoying, is that 99+% of the examiners don't understand that proper restriction requires 1) an explanation of why the CLAIMED inventions are independent or distinct and 2) the reasons for insisting upon restriction. And that even if they are independent or distinct, if there's no burden to search and examine the entire application, restriction is not proper.

What I always got was, "well, they're classified differently, so ipso facto, they're restrictable."

Ugh. Nice analysis. Way to short circuit the whole inquiry.

I also used to get the "the apparatus is in class/subclass ABC/DEF and the method is in class/subclass GHI/JKL.

I'd read the definitions of those classes/subclasses and the definition of ABC/DEF would say, "search also GHI/JKL." I would print out a copy of the definitions and make a note of that in my response and say, "Clearly the mandatory search of the apparatus includes a search of the class/subclass for the method, therefore there is no burden as the examiner must conduct the mandatory search." What I would get back is, "Mandatory, huh, what? Well, the search requires me to search more than one sub, so that's a burden. Requirement is final."

I also always got the silly "the method can be practiced by another and materially different apparatus, for example by hand" reasoning.

Really? Your hand can generate radiation? Are you the Green Lantern or something?

Don't get me started on how many improper restrictions between ABsp and Bsp I've received over the years.

Jordan is exactly correct. Examiners are lazy and look at restriction as a means to reduce the number of claims between them and that precious count.

Make them earn it.

And yes, I've petitioned numerous restriction requirements and gotten them withdrawn.

Posted by: JD at March 20, 2008 11:58 AM

Reduced to present value, a diviional filing fee, issue fee, and maintenance fees total about $6K. Our case management fees are also substantial. The scope of broad claims is almost always broader than the combination of many narrow claims.

Thus, I disagree with opampman - it almost always makes economic sense to traverse bogus restrictions.

Common errors:

(a) as JD notes, Chapter 800 sets out prima facie elements for any complete restriction. For example, in 3600/2100 where I practice, only about half of all restriction requirements, and almost no election requirements, make showings of "serious search burden." If the examiner didn't write a complete paper, then procedurally no requirement exists, and you have no duty to elect. All you do is point out the deficiency, and ask that the paper be issued in corrected form, that all claims be examined. MPEP § 710.06 is very helpful here.

(b) In bogus restriction requirements, 90% of the time the bogosity resides in the class/subclass assignment. Examiners are very creative; help them by leading them to the correct class/subclass.

NEVER concede that claims are patentable over each other.

I succeed well over 70% of the time - this is a good use of the client's money.

Posted by: Points to Ponder at March 20, 2008 12:11 PM

JD says: Aww, come on, you're mandated to search two subclasses because it says so right here in the definition of the class.

LOL that definition doesn't make us have to do anything. It is a suggestion as to where further information might be found should be so inclined to graciously bestow you with further searching. G R A C I O U S L Y. Next time, in your resonse, just say please. BTW, have you seen the subs that have 10+ other subs that we, according to you, "must" search? All with 1k+ patents in them? LOL, sure I'll look through 10k docs for you, right. That would take ten+ hours on 5- sec autoflip (I have actually done it before).

BTW, you can use things other than an illuminator to shape plasma iirc, so restriction is proper, if they withdrew then that just you getting lucky or them being stupid/not wanting to deal with you.

I haven't been around for a bit, good to see this place still kickin. I like the comment system here so much better.

Posted by: E6k at March 20, 2008 5:55 PM

I'll agree with the posters that there is some abuse of restriction practice. It can be a tough concept to wrap your brain around. It can also be a very malleable legal concept.

Here's something I think has been missing from the discussion above: JD can quote me the exact MPEP passage later (i'm too tired to look now), but in an ideal world the examiner searches the claims (duh) and that which could be claimed.

Thats fine, whatever. Where I work however, we see a lot of this:

Claims 1-10: A method of making . . .

Claim 12: X made by the process of claim 1

Big deal, right? Product-by-process - cake! It doesn't have to be pxp, maybe just a broad product claim. But then you read that spec and see that table of properties of X. Or those figures showing all of those features of X, etc. You can search each and every one and spend all sorts of time doing it, but remember, they aren't in the claim! Keep in mind also basic black letter anticipation law: all elements, expressly or inherently, as arranged in the claim. Well how does the examiner know which feature you will pull out of that spec and claim next? How will it be arranged in the claim? There are time pressures in this job (as has been beat to death). You reject and move on with life.

The case comes back with amended claims, new claims, features not present in the claims as filed, etc. Now go back and read Kuhn's post on the production system. That amended case gets you nothing, and often you have to chase down some random little thing pulled out of Example 26 or Figure 14. Burdensome to search at the beginning? Maybe. Burdensome to search in the middle of a case? Definitely.

Restriction is helpful in these situations. Some of these bigger cases you have to box the Applicant in. Attorneys dont think of restriction in terms of the prosecution "time line." That's all I'm thinking about when I restrict a case.

JD's example I wouldn't restrict. I'll find both where I would search for one. My example is real though. Poor claiming. Whats that section that says something about claiming as broad as you think you're entitled to and as narrow as you'll accept? Meh, no matter.

JD, did you leave the office before computers? (no offense, i seriously dont know) Attorneys know about the handy dandy little MS Word application that walks us through a restriction, right? ("Is this case filed under 371 yes/no? What do you want to do? Restriction, Species Election, Both?") If I had to guess, what attorneys are seeing is akin to punching numbers into a calculator without having been taught multiplication or long division. If something doesn't make sense, it was probably just the next choice on a pop-up screen.

Ah, what do I know, I'm just another examiner . . .

Posted by: just another examiner at March 20, 2008 8:00 PM

jae is exactly right. The number 1 priority in restriction is almost always what will happen if I don't restrict, for example, the method of making from the product made and then in response to the first OA applicant comes in with new claims to 100s of derivate products made by the same methods. Now what you gonna do? If it wasn't a burden to examine the original claims then why is it a burden to examine the new dependent claims? In other words, you could do a thorough and complete FAOM only to have to do an equally thorough and complete second FAOM with even more inventions only you get no credit whatsoever and that second FAOM is a labeled a "final" OA. Get real.

Posted by: and another examiner at March 21, 2008 6:10 AM

"LOL that definition doesn't make us have to do anything."

Unfortunately, that is too often the case. A former colleague of mine, who is now a TC Director, told me, "We don't even consider missing the mandatory search to be an error on the program anymore."

That's why the PTO is in such dire straits. The examiners don't know how to search.

Plain and simple.

I was there when computers were there. Not sure what your point is. You've either met the criteria for a proper restriction or you haven't.

Glad to know that the MS word application you use asks you if it's a 371. If I had a nickel for every "restriction" I've gotten in a 371 case, I'd be retired and living comfortably.

Oh well.

Posted by: JD at March 24, 2008 12:20 PM

The point is many probably think they've done something correctly because they use the tool that was given to them.

It was just a question - no need to get your panties in a bunch. So what did you do? (By the way, didnt you brag on another blog about how few restrictions you did, about how you walked down the hall to get a SPE's initials on the claims so you could force a transfer in the event the applicant elected something outside your art? Are you the authority on this given your admitted lack of restriction practice?)

Are your anecdotal stories from your days at the office what you view as proper? How does that jive with my example above? Is one product-by-process claim a burden? What about when that one product could have 100 different features or properties coming out of the spec when the case comes back amended. What then? Burden?

JD, I shared that b/c as learned as you may be, its becoming increasingly apparent that you dont know what is going on at the Office. Maybe instead of getting in a pissing contest with 6K and ruining these threads (as I am now doing) you could offer your perspective in a way that doesn't trash others, and maybe learn a thing or two along the way. (the people who read these blogs are probably not the problem) I've actually learned a thing or two from a post of yours in the distant past. 9 times/10 anymore, I scoll on by. You dont have to take a dump on every examiner that posts something.

That aside . . . Keep your eyes peeled for a new form paragraph that rolls all of the burden to search rationale into one. (i.e., unless they changed it again, there is no longer the choice between separate classification, separate status in the art, etc.) It popped up on my screen a month or so ago. This isn't some examiner being cute with you JD, so dont go ballistic. Its what the machine spit out. Oh, and the next question after answering yes to 371 leads you into the unity of invention analysis, but I guess you knew that since you did it at the office.

Patentsquawk - I know you prosecuted some of your cases pro se. Any get restricted? How did you handle it? Why?

Posted by: just another examiner at March 24, 2008 8:05 PM

"So what did you do? (By the way, didnt you brag on another blog about how few restrictions you did, about how you walked down the hall to get a SPE's initials on the claims so you could force a transfer in the event the applicant elected something outside your art? Are you the authority on this given your admitted lack of restriction practice?)"

I made restriction requirements properly. If that's bragging, so be it. That was the procedure when I was there. So if I used the procedure, according to you what I did was correct. Or does your "logic" not apply to me?

"Are your anecdotal stories from your days at the office what you view as proper? How does that jive with my example above? Is one product-by-process claim a burden? What about when that one product could have 100 different features or properties coming out of the spec when the case comes back amended. What then? Burden?"

If the claims come back amended, and you can make a proper restriction (i.e. establish the claims are distinct or independent and establish the reasons for restriction), then make the restriction.

All of this is in the MPEP. You may want to peruse it between blog postings.

"JD, I shared that b/c as learned as you may be, its becoming increasingly apparent that you dont know what is going on at the Office."

I'm well aware of what's going on in the Office. Have plenty of friends at the PTO whom I speak to on a regular basis. It's not exactly Skull & Bones over there.

And I know the law. So I don't particularly care about what's going on at the Office, except to say that you are required to obey the law, no matter what the idiots in PTO (mis)management tell you.

"Maybe instead of getting in a pissing contest with 6K and ruining these threads (as I am now doing) you could offer your perspective in a way that doesn't trash others, and maybe learn a thing or two along the way. (the people who read these blogs are probably not the problem) I've actually learned a thing or two from a post of yours in the distant past."

I already learned how to game the production system when I was an examiner, so I doubt there's anything I could learn from you. If you've only learned a thing or two from me, that's too bad, because you obviously haven't been paying attention. I've taught you, and others like you, bibles of truth. The problem is what I've taught you doesn't jive wit' "gittin' counts" so you don't bother to incorporate it into your daily activities. That's your loss.

"9 times/10 anymore, I scoll on by."

I guess this was the 1/10 time that you didn't scroll by, huh?

"You dont have to take a dump on every examiner that posts something."

I've had plenty of interaction with LL and MVS in which we've agreed on a number of things. Of course, those two actually know something. Not so sure about you.

I guess you missed those posts as they were in the 9/10 you scrolled by.

"This isn't some examiner being cute with you"

Ain't that the truth.

Keep sending me those restriction requirements in all of my 371 cases. Maybe then I can retire and you can keep up your outstanding efforts over there at the PTO.

Posted by: JD at March 25, 2008 11:44 AM