One had to do with a Continuation of an application where a restriction requirement had been made, and the applicant had ignored the requirement and filed with all the original claims.
804.01 Prohibition of Double Patenting Rejections Under 35 U.S.C. 121
[…]Note that a restriction requirement in an earlier-filed application does not carry over to claims of a continuation application in which the examiner does not reinstate or refer to the restriction requirement in the parent application. Reliance on a patent issued from such a continuation application to reject claims in a later-filed divisional application is not prohibited under 35 U.S.C. 121.
Does anyone know the answer to the following question? The answer key said E was right. But claims 1-10 were rejected twice in the parent application. Don’t they qualify for appeal? Can someone help me explain this? thank you so much.
October 15, 2003 Morning Exam
42. A registered practitioner filed a first patent application wherein claims 1-10 claims are
directed to a widget and claims 11-20 are directed to a method of making a widget. Following a
proper restriction requirement, claims 1-10 were elected for prosecution. The primary examiner
rejected claims 1-10. The practitioner filed a reply that only consisted of argument. The
examiner was unpersuaded by the argument, and entered a final rejection of claims 1-10. In
reply, the practitioner filed a continuing application containing claims 1-10 directed to a widget,
and claims 11-20 directed to a method of using a widget. In the continuing application, the
examiner enters a new written restriction requirement requiring a provisional election between
claims 1-10 and claims 11-20. The practitioner believes the new restriction requirement is
improper and would like the rejection in the parent application reviewed as well. The new
restriction requirement has not been made final. Which of the following best describes whether
and why, in accordance with the patent laws, rules, and procedures as related by the MPEP, the
reply to the restriction requirement may be by appeal to the Board of Patent Appeals and
Interferences?
(A) Yes. An immediate appeal to the Board can be filed to review the restriction requirement if any claims have been twice rejected.
(B) No. An immediate appeal cannot be filed to the Board because the new claims directed to a method of using a widget have not been twice rejected.
(C) Yes. An immediate appeal can be filed for any claims that have been twice rejected because the Board can also review any second restriction requirement made against the same claims.
(D) No. An immediate appeal to the Board cannot be lodged because a provisional election has not been made of either the claims to a widget or claims to a method of use of the widget.
(E) No. An immediate appeal cannot be taken because no claims are currently under rejection. Review of a final restriction requirement is only possible as a
petitionable matter before a Technology Center Director. It is not an appealable
matter to the Board.
sorry I posted, but didn’t “reply”
A is not correct because the BPAI does not review restriction requirements.
B is not correct for the same reason, the “appeal” is to the director.
C is not correct for the same reason, the BPAI cannot review the restriction.
D is not correct for the same reason.
So in this case A-D are clearly wrong. That is not to say that there would not be other “right” choices. Also I’m pretty sure that you cannot appeal unless there are claims that are currently under rejection, and in this case there are not…
You cannot appeal a requirement for restriction to the Board of Appeals — only to the Director:
37 CFR 1.144 Petition from requirement for restriction.
**>After a final requirement for restriction, the applicant, in addition to making any reply due on the remainder of the action, may petition the Director to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsideration of the requirement was not requested (see § 1.181).<
The correct answer to cindy’s questions is E.
FYI… To releave some possible confusion for Cindy, though I doubt she’s still reading, a restriction does not fall under the same category as a rejection. And therefore the claims have not been twice rejected, rather twice restricted.
This would be kind of like rule based vs. statutory, or objections vs. rejections.
The reason E is correct in this scenario is that the practitioner has not elected a set of claims in response to the restriction requirement. Even if you disagree with the restriction requirement, you MUST elect, or else the response is considered incomplete.
Further, the examiner cannot reject any claims until one of the “inventions” is elected. Thus, if you have not elected, no claims are under rejection and you would have no rejection(s) to appeal.
What if this question in response 1 is asking whether the restriction can be petitioned?
In this case, the parent application had one restriction, and the continuation also got one. Are they cumulative? Can the practitioner elect/ and petition? I guess the problem is whether the restriction was traversed in the parent…..
Petition does not require cumulative or final. If you got a restriction requirement and traverse it. You can request for reconsideration. And if it fails you may petition to the director.
Hope it will help you.
§ 1.144 Petition from requirement for restriction.
After a final requirement for restriction, the appli¬cant, in addition to making any reply due on the remainder of the action, may petition the Director to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsid¬eration of the requirement was not requested (see § 1.181).
I don’t think they are counted cumulatively anyways.
MPEP 804.01(E) – Even though this section is about double patenting there is a comment in paragraph E that states ” note that a restriction requirement in an earlier-filed application does not carry over to claims of a continuation application in which the examiner does not reinstate or refer to the restriction requirement in the parent application.”
This is a repeat form old tests. Appeared on 4/27/2011.
The answer E is the important one. It says the claims are not “under rejection” (I don’t understand, but whatever) but gives the MOST important fact, that the rejection is to be PETITIONED not appealed.
I may be wrong here. Actual question/answer unclear.
You are correct! You CANNOT appeal a restriction requirement, only petition is allowed for restriction requirement.
If a final requirement for restriction is made by the examiner, applicant may file a petition under 37 CFR 1.144 for review of the restriction requirement. (MPEP § 821)
Got this question today 5/18/11.
Exact repeat of an old 02, or 03 question. Where he files, gets restriction and elects in parent, has elected claims twice and finally rejected, then files a continuation claiming benefit but RE-adding the previously restricted claims. Examiner files ANOTHER restriction requirement, but no action on the merits yet. Most of the answers say “appeal the restriction requirement” (WRONG only petiiton). The right answer says something like, “no appeal can be made because no claims are under rejection in the continuing application and the restriction requirement is petitionable ONLY.”
got this one 8/24
An applicant can petition only if the the applicant traverses the restriction requirement, correct?
What gives you the right to petition a RR? You traversed with specific reasons when you elected. NO traversal will forefeit your right. Simple/general traversal without specific reasons will also forefeit your right.
When can you petition? When the RR is made FINAL.
§ 1.144 Petition from requirement for restriction.
After a final requirement for restriction,…..may peitition the director….
Got a question on restriction and linking claim 5/22/12.
Applicant filed
claim 1. A process of making blah.
claim 2. linking claim.
claim 3. product blah.
Examiner orders restriction, what should applicant do…partially guessed on the answer…something like elect claim 3 and argue something…not sure if that’s correct.
818.03(d) Traverse of **>Restriction Requirement Withof a single invention in reply to a restriction
requirement,only,it iswhich depend from or otherwise require all the limitations
of the allowable linking claimWhen a final restriction requirement is contingent on the nonallowability
of the linking claims, applicant may petition
from the requirement under 37 CFR 1.144without waiting for a final action on the merits of the linking claims or applicant may defer his or her petition
until the linking claims have been finally rejected, but not later than appeal. See 37 CFR 1.144and MPEP § 818.03(c).<