Q) Restriction (4.00.9a)

by patentbar on September 4, 2008 · 7 comments

in Exam Questions

9. A non-final Office action contains, among other things, a restriction requirement between
two groups of claims, (Group 1 and Group 2). Which of the following, if included in a timely
reply under 37 C.F.R. § 1.111, preserves applicant’s right to petition the Commissioner to review
the restriction requirement?
I. Applicant’s entire reply to the restriction requirement is: “The examiner erred in
distinguishing between Group 1 and Group 2, and therefore the restriction
requirement is respectfully traversed and no election is being made, in order that
applicant’s right to petition the Commissioner to review the restriction
requirement is preserved.”
II. Applicant’s entire reply to the restriction requirement is: “Applicant elects
Group 1 and respectfully traverses the restriction requirement, because the
examiner erred in requiring a restriction between Group 1 and Group 2.”
III. Applicant’s reply distinctly points out detailed reasons why applicant believes the
examiner erred in requiring a restriction between Group 1 and Group 2, and
additionally sets forth, “Applicant therefore respectfully traverses the restriction
requirement and no election is being made, in order that applicant’s right to
petition the Commissioner to review the restriction requirement is preserved.”
IV. Applicant’s reply distinctly points out detailed reasons why applicant believes the
examiner erred in requiring a restriction between Group 1 and Group 2, and
additionally sets forth, “Applicant therefore respectfully traverses the restriction
requirement and elects Group 2.
(A) I.
(B) II.
(C) III.
(D) IV.
(E) None of the above.

9. ANSWER: (D). 37 C.F.R. § 1.111(b); MPEP §§ 818.03(a)-(c). (I) is incorrect since the
traversal does not distinctly point out the supposed errors in the examiner’s action, and no
election is made. 37 C.F.R. § 1.143. (II) is incorrect since the traversal does not distinctly point
out the supposed errors in the examiner’s action. (III) is incorrect since no election is made. (E)
is incorrect because (D) is correct.

{ 7 comments… read them below or add one }

1 Be_of_good_CheerNo Gravatar January 6, 2011 at 1:33 pm

All testers should automatically be able to rule out all answers on Restrictions in which there is not an election made. This is a great help in narrowing the answer choices on this type of question.

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2 maggieNo Gravatar August 28, 2011 at 11:04 pm

I got a couple of really hard restriction Qs 8/24/2011, but I cant remember must details about them.

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3 PCTearsOfJoyNo Gravatar February 5, 2012 at 4:21 pm

Got a variant of this on 2/2 with some answer choices worded differently.

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4 MNGirlNo Gravatar March 20, 2012 at 12:17 am

Had this or a simialr variant on 3/19/12

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5 Churning Away NoMoreNo Gravatar July 1, 2012 at 2:25 pm

Got this. 06.30.2012

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6 khaledNo Gravatar March 21, 2013 at 11:24 am

Is any one has a practical example of segragating chemical claims into two applications (parent and divisional) as recomended by Examiner to avoid unity matter ? thank U.

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7 ERDNo Gravatar April 28, 2015 at 5:11 pm

Got this one on 2/22/15.

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