Comments on: Q) Restriction http://mypatentbar.com/2008/08/01/414/ Patent Bar Review and Study Guide Sat, 04 Feb 2012 15:35:39 +0000 http://wordpress.org/?v=2.9.2 hourly 1 By: maggie http://mypatentbar.com/2008/08/01/414/#comment-18178 maggie Fri, 21 Oct 2011 17:23:15 +0000 http://patentbar.wordpress.com/?p=414#comment-18178 I had a Q like this 8/24 exam I had a Q like this 8/24 exam

]]> By: Axo http://mypatentbar.com/2008/08/01/414/#comment-12702 Axo Fri, 01 Jul 2011 14:13:06 +0000 http://patentbar.wordpress.com/?p=414#comment-12702 Got a variant (not the linking variant, but a different one) on 6/28/11, had to look it up. Got a variant (not the linking variant, but a different one) on 6/28/11, had to look it up.

]]> By: Becker http://mypatentbar.com/2008/08/01/414/#comment-10887 Becker Tue, 17 May 2011 19:24:28 +0000 http://patentbar.wordpress.com/?p=414#comment-10887 I got this question 5/16/2011. The variant that AdamA mentioned above. I got this question 5/16/2011. The variant that AdamA mentioned above.

]]> By: Overworkked http://mypatentbar.com/2008/08/01/414/#comment-10112 Overworkked Thu, 28 Apr 2011 19:04:54 +0000 http://patentbar.wordpress.com/?p=414#comment-10112 Variant on 4/27/2011 Complex question and answer set. Answers were permutations of distinct, utility, and searching. Looking at MPEP you can whack a few of the answers, but you need to spend 5 mins on this problem and exclude each answer 1 by 1. Variant on 4/27/2011

Complex question and answer set. Answers were permutations of distinct, utility, and searching.

Looking at MPEP you can whack a few of the answers, but you need to spend 5 mins on this problem and exclude each answer 1 by 1.

]]> By: misspatent http://mypatentbar.com/2008/08/01/414/#comment-9124 misspatent Fri, 01 Apr 2011 18:19:43 +0000 http://patentbar.wordpress.com/?p=414#comment-9124 That seems correct. Se 809: "The linking claims must be examined with>, and thus are considered part of,. When all claims directed to the elected invention are allowable,allowablebetween the linked inventionsrequires" That seems correct. Se 809: “The linking claims must be examined with>, and thus are considered part of,. When all claims directed to the elected invention are allowable,allowablebetween the linked inventionsrequires”

]]> By: Anne http://mypatentbar.com/2008/08/01/414/#comment-6597 Anne Thu, 20 Jan 2011 03:16:29 +0000 http://patentbar.wordpress.com/?p=414#comment-6597 Got questions about criteria of requiring restriction of combination/subcombination. Got questions about criteria of requiring restriction of combination/subcombination.

]]> By: studier http://mypatentbar.com/2008/08/01/414/#comment-5058 studier Sat, 04 Dec 2010 20:02:10 +0000 http://patentbar.wordpress.com/?p=414#comment-5058 The following examples are included for general guidance. **> I. SUBCOMBINATION ESSENTIAL TO COMBINATION . . . Where a combination as claimed sets forth the details of the subcombination as separately claimed, there is no evidence that combination ABsp is patentable without the details of Bsp. The inventions are not distinct and a requirement for restriction must not be made or maintained, even if the subcombination has separate utility. . . . II. SUBCOMBINATION NOT ESSENTIAL TO COMBINATION . . . Where a combination as claimed does not set forth the details of the subcombination as separately claimed and the subcombination has separate utility, the inventions are distinct and restriction is proper if reasons exist for insisting upon the restriction, i.e., there would be a serious search burden as evidenced by separate classification, status, or field of search. . . . III. PLURAL COMBINATIONS REQUIRING A SUBCOMBINATION COMMON TO EACH COMBINATION When an application includes a claim to a single subcombination, and that subcombination is required by plural claimed combinations that are properly restrictable, the subcombination claim is a linking claim and will be examined with the elected combination (see MPEP § 809.03). . . . The following examples are included for general
guidance.
**>
I. SUBCOMBINATION ESSENTIAL TO
COMBINATION
. . .
Where a combination as claimed sets forth the
details of the subcombination as separately claimed,
there is no evidence that combination ABsp is patentable
without the details of Bsp. The inventions are not
distinct and a requirement for restriction must not be
made or maintained, even if the subcombination has
separate utility.
. . .
II. SUBCOMBINATION NOT ESSENTIAL
TO COMBINATION
. . .
Where a combination as claimed does not set forth
the details of the subcombination as separately
claimed and the subcombination has separate utility,
the inventions are distinct and restriction is proper if
reasons exist for insisting upon the restriction, i.e.,
there would be a serious search burden as evidenced
by separate classification, status, or field of search.
. . .
III. PLURAL COMBINATIONS REQUIRING A
SUBCOMBINATION COMMON TO EACH
COMBINATION
When an application includes a claim to a single
subcombination, and that subcombination is required
by plural claimed combinations that are properly
restrictable, the subcombination claim is a linking
claim and will be examined with the elected combination
(see MPEP § 809.03). . . .

]]> By: studier http://mypatentbar.com/2008/08/01/414/#comment-5057 studier Sat, 04 Dec 2010 19:57:40 +0000 http://patentbar.wordpress.com/?p=414#comment-5057 806.05(a) Combination and Subcombination** [R-3] A combination is an organization of which a subcombination or element is a part. ** 806.05(c) Criteria of Distinctness *> Betweenandbetween combination and subcombination inventionsthere would be a seriuos search burden as evidenced byanother materiallycombination<. When these factors cannot be shown, such inventions are not distinct. 806.05(a) Combination and Subcombination**
[R-3]
A combination is an organization of which a subcombination
or element is a part.
**
806.05(c) Criteria of Distinctness *> Betweenandbetween
combination and subcombination inventionsthere would be a seriuos
search burden as evidenced byanother materiallycombination<.
When these factors cannot be shown, such inventions
are not distinct.

]]> By: AdamA http://mypatentbar.com/2008/08/01/414/#comment-3861 AdamA Mon, 13 Sep 2010 16:06:08 +0000 http://patentbar.wordpress.com/?p=414#comment-3861 Variant on Sept. 12, 2010. Involved a restriction requirement with a linking claim. Claim 1 and Claim 3 linked by Claim 2. I believe that I answered something like traverse the restriction, elect either Claim 1 or Claim 3 and attach linking claim 2 to the one selected. Variant on Sept. 12, 2010.
Involved a restriction requirement with a linking claim. Claim 1 and Claim 3 linked by Claim 2. I believe that I answered something like traverse the restriction, elect either Claim 1 or Claim 3 and attach linking claim 2 to the one selected.

]]> By: Marianne http://mypatentbar.com/2008/08/01/414/#comment-2446 Marianne Fri, 28 May 2010 02:35:35 +0000 http://patentbar.wordpress.com/?p=414#comment-2446 ANSWER: (C) is a false statement and therefore the correct answer. Under 35 U.S.C. § 261, “An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.” (C) is correct because ABC Corporation acquired all of John’s ownership rights in the original patent application, including the subcombination claimed in the original nonprovisional and divisional patent applications. The assignment of the rights to ABC Corporation was recorded in the USPTO prior to the subsequent acquisition of the subcombination by XYZ Corporation. U.S.C. § 261. ABC Corporation’s recordation of its assignment gave constructive notice to XYZ Corporation. MPEP § 306 recites that in the case of a division…application, a prior assignment recorded against the original application is applied to the division…application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applications. (A) and (B) are true statements and therefore wrong answers. John gave up his ownership rights when he executed the assignment to ABC Corporation. The assignment to ABC Corporation carries with it the transfer of the bundle of rights associated with subject matter common to the original patent ANSWER: (C) is a false statement and therefore the correct answer. Under 35 U.S.C.
§ 261, “An assignment, grant, or conveyance shall be void as against any subsequent purchaser
or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and
Trademark Office within three months from its date or prior to the date of such subsequent
purchase or mortgage.” (C) is correct because ABC Corporation acquired all of John’s ownership
rights in the original patent application, including the subcombination claimed in the original
nonprovisional and divisional patent applications. The assignment of the rights to ABC
Corporation was recorded in the USPTO prior to the subsequent acquisition of the
subcombination by XYZ Corporation. U.S.C. § 261. ABC Corporation’s recordation of its
assignment gave constructive notice to XYZ Corporation. MPEP § 306 recites that in the case of
a division…application, a prior assignment recorded against the original application is applied to
the division…application because the assignment recorded against the original application gives
the assignee rights to the subject matter common to both applications. (A) and (B) are true
statements and therefore wrong answers. John gave up his ownership rights when he executed
the assignment to ABC Corporation. The assignment to ABC Corporation carries with it the
transfer of the bundle of rights associated with subject matter common to the original patent

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