Restriction Petition Survey; A Few Helpful Hints

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Restriction Petition Survey A Few Helpful Hints

• Julie Burke
• TC1600 Special Program Examiner
• 571-272-0512

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TC 1600 Filings and Restrictions

• TC1600 mails out about 28,000 first actions on
  the merits each year and about 12,000 restriction
  requirements
• Of about 12,000 restriction requirements mailed
  per year, only about 75 are petitioned
• 21 of TC1600 cases are filed under 35 U. S. C.
  371 (i.e., the national stage of a PCT
  application), yet 371 applications account for
  about 30 of the petitions
• on average, a 91 day turnaround time to mail
  decision for a restriction petition

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Concerned about a Restriction Requirement?

• File an election with traverse
• Follow up with the
• Examiner, then
• SPE, then
• SPRE or QAS, then
• Group Director
• File a petition
• Tips
• File the petition as a separate paper
• Clearly label the first page of the petition

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Petitions should be decided BEFORE the next
action on the merits is mailed.
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Petitions do not stop the clock!

• Please file required response within the time
  period indicated in the last Office action.

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Prematurely filed petitions may be dismissed

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• Tip Avoid dismissals by filing petitions
  AFTER the restriction requirement is
•         repeated or
•         made final.

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Do US restriction requirement or PCT unity
of invention rules apply?

• Examiner must use correct rules when formulating
  a restriction requirement or a lack of unity
• If the application is filed under 35 USC 111(a),
  then US rules apply. See chapter 800.
• If the application is a 371 national stage
  filing of a PCT under 35 USC 371, then PCT unity
  of invention rules apply. See chapter 1800.
• Note Divisionals, continuations and
  continuation-in-parts of PCTs or 371s are subject
  to US rules.
• Tip for traversal Point out instances in
  which the wrong rules are used.

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• Current Form Paragraphs should be used when
  formulating restriction requirements
•  
• Tip for Traversal Point out instances when
  out-dated or altered form paragraphs are included
  in restriction requirements.
• Note-This alone will not necessarily result in
  the petition being granted.

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Incomplete Restriction Requirements

• All claims should be accounted for either in
  groups or in the linking claim form paragraphs.
• The groupings should not result in loss of scope
  of claimed subject matter.
• Tip for traversal Point out any inventions
  missing from the groupings.

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Groups cannot overlap in scope

• Where the claims of an application define the
  same essential characteristics of a single
  disclosed embodiment of an invention, restriction
  there between should never be required. See
  806.03
• Tip for Traversal Point out instances
  when the same disclosed embodiment can be
  placed in two separate groups.
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• Example Group I Tropical fruit.
• Group II Citrus fruit.
• Yet specification discloses an orange
  which is encompassed by both groups.

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Species must be 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.See 806.04(f)
• Tip for Traversal Point out instances when two
  or more species overlap in scope.
•  An example of species which overlap in scope
  rodent, mouse and transgenic mouse.
• These species are genus, subgenus and species

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Independent Inventions are unrelated

• Inventions as claimed are independent if there is
  no disclosed relationship between the inventions,
  that is, they are unconnected in design,
  operation, and effect... 806.06
• Tip for traversal Identify pairs of
  independent inventions that are
• disclosed as useable together or
• connected in one of design, operation or effect.
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• Such pairs of inventions are related and should
  be considered for distinction under MPEP 806.05.

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• Burden must be shown for all restriction
  requirements, including
  
  
  
• Tip for Traversal If the examiner has not
  addressed burden, the restriction requirement is
  incomplete.

• Restriction between independent or distinct
  inventions
• and
• Provisional election of species requirements.
  See 803(I)

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Status Inquiries and Contact Information

• Check public PAIR to see if petition has been
  received
• Questions? Call TC1600 SPRE Petition Leads
• Bill Dixon 571-272-0519
• Marianne Seidel 571-272-0584
• If petition is decided outside the TC, contact
• Office of Initial Patent Examination 571-272-400
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• Office of Petitions 571-272-3282
• Office of Publication- Image Assistance
  Center 571-272-4200