Often practitioners look at the issue of restriction petitions, or appeals, as isolated issues in prosecution rather than as part of an overall coordinated strategy. One applicant that has recognized the benefits of a coordinated approach is Philips, as illustrated in US 14/930,221. Coordination can not only move a case more effectively toward allowance, but also enable an improved path to setting up the case for appeal while minimizing RCE costs.
In this case, the invention relates to a device for measuring the intracranial pressure (ICP) in a subject with certain sensors detecting spontaneous retinal venous pulsations relative to the patient's head orientation. In one example, the sensors include a pulse oximeter and a camera detecting head movement, and the invention includes a processor for utilizing the camera to detect the head position and thus better process the pulse-ox signal. In the application, a first claim set was directed to generic sensors, while the second claim set specifically called out the camera and pulse-ox sensor. However, dependent claims depending from the generic sensor claims also called out these specific sensor details.
Philips likely recognized that an appeal may be needed in this case, but it was better go with a one-two punch by first petitioning the restriction requirement just before appeal. This yields several possible (beneficial) outcomes. If the petition is granted (as was the case here), the applicant is able to have further claim amendments entered (to better set the case up for appeal) and further have more claims examined (and thus able to be argued on appeal) thereby increasing the chances of success. An alternative outcome (that occurs often) is that to avoid the extra work of writing an Answer only to have prosecution re-opened if the petition is successful, is for the Examiner to call and suggest a way forward if the applicant is willing to cancel the withdrawn claims and withdraw the petition.
Here, Philips adeptly pointed out the clear lack of search burden given that the dependent claims that were already examined negated any need for extra searching in the non-elected independent claim. From Philips' petition:
The Office of Petitions agreed, rendering a decision before the appeal brief was due. Philips thus avoided the need for an RCE to have desired claim amendments entered before having to file the appeal brief. While Philips paid the Notice of Appeal fee, if an appeal is eventually required, the Notice of Appeal fee can be re-applied. But now Philips gets to appeal with updated claims and with more claims, increasing the chances of obtaining at least one reversal by the Board.
So, consider how to coordinate petitions and appeals to maximize your chances of success and while minimizing government fees (especially now that RCE fees have increased yet again).