You may not be familiar with the less-common "election by original presentation," in which the Examiner elects the claims. Now, it's not as bad as it sounds – this can happen only in limited situations, and the Examiner can't just elect any subset he wants.
Here's the deal: the Examiner is allowed to use election by original presentation (described in MPEP § 821.03) when you add claims that are directed to a different invention than the one you originally started with. The idea is that the Examiner already searched the original invention, so you can't pursue the new invention in this application, even if you want to. So the Examiner elects the claims directed to the original invention and withdraws the other claims. The MPEP instructs the examiner to use this form paragraph:
Newly submitted claim [1] directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: [2]If you disagree with the Examiner that the new claims are directed to a different invention, you have the same recourse as for the standard restriction requirement: you request reconsideration and provide arguments why the restriction is improer, and then you petition if that fails.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim [3] withdrawn from consideration as being directed to a non-elected invention.
What is a "newly submitted claim?" Is it limited to new claims added during prosecution, or does it cover an amended original claim? I don't know the answer to this, but it makes sense to me that the Examiner could also use election-by-presentation when you make amendments to an existing claim. After all, we've all seen amendments that replace 90% of the words in the existing claim, right? How is that any different, substantively, than a new claim?
Not being allowed to pursue newly claimed subject matter as a result of election-by-prosecution by the Examiner is annoying enough – but there may be worse side effects. To begin with, you can get slapped with a non-responsive amendment if your response cancels the claims directed to the original invention and thus includes only claims directed a different invention. Here's the Examiner form paragraph, from MPEP § 821.03:
The amendment filed on [1] canceling all claims drawn to the elected invention and presenting only claims drawn to a non-elected invention is non-responsive. The remaining claims are not readable on the elected invention because [2].Worse yet, if you file an RCE in order to get those new/amended claims entered (the ones directed a different invention), and then the Examiner withdraws them from examination...you've wasted an RCE fee. You'll need to file those claims in another application, and you don't get your RCE fee back.
Since the above-mentioned amendment appears to be a bona fide attempt to reply, applicant is given a TIME PERIOD of ONE (1) MONTH or THIRTY (30) DAYS, whichever is longer, from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD UNDER 37 CFR 1.136(a) ARE AVAILABLE.
If the Examiner balks at your claims directed to a different invention, make sure that the Examiner actually issues an Office Action with a restriction-plus-election-by-presentation. What you don't want is a generic Office Communication simply informing you the response is non-responsive because the only claims in the case are directed to a different invention. (See the file wrapper for 11/300,970 on PAIR for an example of this.)
What's the difference? An important one: only an actual restriction requirement allows you to file the restricted-out claims in a divisional rather than a continuation, which in turn avoids protects you from a double patenting rejection.
I don't know how common Examiner election-by-presentation practice is. It's happened to me only a handful of times. But it is something to think about when adding lots of new features to your claims.
How do you avoid getting the non-response amendment? Are you suggesting keeping at least one article claim in the case clearly drawn to the first invention?
ReplyDeleteI'm not sure what you mean by "article" claim. But you're right about "drawn to the same invention."
ReplyDeleteSince the non-responsive happens when the *only* claims in the case are directed to a different invention, keeping at least one of the existing claims should prevent a "non-responsive" from the Examiner.
"or does it cover an amended original claim?"
ReplyDeleteYes, it covers amended original claims.
"How do you avoid getting the non-response amendment? "
First you don't submit claims to a new invention, i.e. one which can be restricted from the old one. Failing that, you pray. Personally I just 112 2nd them for not having any claims instead of holding them non-responsive. If they would rather me have held them non-responsive then they can say as much in a response. They never have complained.
"Worse yet, if you file an RCE in order to get those new/amended claims entered (the ones directed a different invention), and then the Examiner withdraws them from examination...you've wasted an RCE fee. You'll need to file those claims in another application, and you don't get your RCE fee back."
If they submit the amendment with an RCE I usually don't do the restriction by original presentation. I'd say you could get a spe to override that if someone did that to you.
"I don't know how common Examiner election-by-presentation practice is. "
Not very. A good portion of examiners are clueless about restrictions, and a good portion of the remaining ones do not know how to do an election by original presentation. Amongst those few people left who know how to do one, the opportunity rarely arises. I might have done like 2-4 in my whole career of 3.5 years and I'll do it just about anytime. Keep in mind that over half of every case I do gets a restriction at some point.
"I'm not sure what you mean by "article" claim"
ReplyDeleteI goofed and accidentally added the word article after reading the example case you mentioned. Thanks for your response.
Great blog!
>Personally I just 112 2nd them for not having
ReplyDelete>any claims instead of holding them
>non-responsive.
Great to have comments from an Examiner!
Hmm. Wonder if there's much difference between Non-Responsive and a new OA with a 112 2nd (and presumably no other rejections, since there are by definition no claims in the case.)
Off the top of my head, I can think of a couple of diffs. One, non-responsive has a shorter reply period (either one-month or whatever is left of the original 6 months). Two, I'm thinking that maybe Non-Responsive hurts more in Patent Term Adjustment.
>I'd say you could get a spe to override that
>if someone did that to you [refused to enter
>new claims on RCE].
Good to hear that Examiners might be willing to work with Applicants here, because it seems strict application of the rules (resulting in wasted RCE fee) is really unfair.
>Amongst those few people left who know how to >do one, the opportunity rarely arises.
Huh. That surprises me, because I would expect a significant number of apps to have claims that morph greatly during pros.
"If they submit the amendment with an RCE I usually don't do the restriction by original presentation. I'd say you could get a spe to override that if someone did that to you"
ReplyDeleteDo you think you'd change your mind about this if you were getting reduced counts because this was the third or fourth RCE?
"Do you think you'd change your mind about this if you were getting reduced counts because this was the third or fourth RCE?"
ReplyDeleteThat is a distinct possibility. I hadn't really thought about that just yet.
"Hmm. Wonder if there's much difference between Non-Responsive and a new OA with a 112 2nd (and presumably no other rejections, since there are by definition no claims in the case.)
"
Yes there is, for whatever reason attorneys ha te to be held non-responsive. Maybe your reasons are the problems. Perhaps it is embarrassing in front of the client.
But if I send you a 112, you either just got finaled, or you just got your nonfinal action.
Whatever the reason, it seems most attorneys prefer the later route because they ha te the former so much. Perhaps it really is because of the fast deadline and having to come up with a whole new response. If it was me I'd be embarrassed.
"Huh. That surprises me, because I would expect a significant number of apps to have claims that morph greatly during pros."
Certainly the claims morph greatly, but that doesn't mean that a valid restriction can go out. Especially with having to show burden and all.
>Great to have comments from an Examiner!
ReplyDeleteI regret to inform you that you have fallen under scrutiny of the metaphorical Eye of Mordor known as the infamous Examiner 6 from of Patently O famoosity. He accused me of being you in the comments while praising your blog in a rather backhanded fashion, which has led a few of us here to your excellent blog. Here's hoping that you enjoy the attention.
broje TINLA IANYL
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