Selecting the right time to petition a restriction has many factors.
As discussed in previous posts, when an applicant believes that there are errors made by an examiner, different approaches are taken to obtain review depending on the issue. Some issues are appealable, and some are petionable. Generally, these two avenues are mutually exclusive.
There are some common examples where applicants take the wrong avenue for a particular argument. At the Board, applicants often fall into the trap of arguing issues that can only be petitioned, such as an improper new ground of rejection in the Answer, or that a drawing objection is incorrect. Likewise, applicants often try petitions regarding issues that are only appealable, such as that an examiner doesn’t understand the technology and has made bad rejections.
A common reason for the USPTO to deny a petition regarding allegations of examiner bias or inability to understand technology is that the Director cannot usurp the power of the PTAB. See some other examples here and here. Specifically, if the applicant is making arguments that somehow go the substance of rejections, or at least can be characterized as such, a petition will be ineffective. This is because the issues of whether the rejections set forth in an Office action are proper relate to the merits of those rejections and, as such, can only be considered on appeal. It is well settled that the Director will not usurp the functions or impinge upon the jurisdiction of the Board. See In re Dickinson and Zenitz, 299 F.2d 954, 958; 133 USPQ 39, 43 (CCPA1962); and Bayley’s Restaurant v. Bailey’s of Boston, Inc., 170 USPQ 43, 44. (Comm’r Pat. 1971).
However, one the flip side, if the applicant can argue that the examiner or supervisory examiner is usurping the power of the PTAB, then that is something that can be petitioned. A potentially significant example of this is where the examiner and/or supervisor improper re-open prosecution responsive to an appeal brief.
Consider the situation where a particular examiner and/or supervisor has (have) a habit of maintaining improper rejections and only reconsidering arguments upon appeal, resulting in an abuse of the power to re-open prosecution. As discussed previously, re-opening should not occur as it wastes both applicant’s and the USPTO’s resources. Unlimited “do-overs” are the antithesis of an efficient and fair legal system. The quest to make the “right” determination should never trump all else in a fair justice system. Thus, when there is a difference of opinion as to the substance of the case, that difference is to be determined by the PTAB (by statute and regulation - 35 U.S.C. § 134 and 37 CFR 1.41). As noted above, the issues of whether the rejections set forth in an Office action are proper relate to the merits of those rejections and, as such, can only be considered on appeal. And because it is well settled that the Director will not usurp the functions or impinge upon the jurisdiction of the Board, by permitting improper re-opening responsive to an appeal in which examiners maintain improper rejections that are only reconsidered on appeal, the Director is, by default, usurping the Board’s authority to decide appealable issues by preventing those appealable issues from adjudication by the Board.
So, know the difference between what you can appeal and petition, and hold the USPTO to the requirements that the difference parts of the Office do not over-reach and usurp power they are not entitled to.
As we have discussed in past posts, restriction requirements can be a serious burden, so it pays to know how to address them strategically. When necessary, restrictions can give the applicant some leverage if they know how to use it. Part of knowing how to use it is knowing how to win petitions against improper restrictions.
Today we review a nice example from a Texas Instruments case that illustrates the teeth of the search burden requirement. The case is SN 14/158,569. The application relates to wireless communication, and in particular to user equipment connected to a base station. The invention deals with LTE systems, and in one embodiment uses some interesting techniques to support multiplexing of unicast and multicast data in a cell operating with the evolved transmission format. While we could go on about the details, the focus of this case is on the restriction (as an aside, applicants in the telecom industry seem to attack restrictions to a lesser extent than some other industries, but more on that another time).
The MPEP makes clear that all restrictions require a serious search burden. Often there is not much on the record as to why there is a serious search burden, other than the examiner’s search classification. In the TI case, the examiner restricted the claims into three groups. The examiner alleged a search burden but classified two of the groups into the same class/subclass (class 370, subclass 231), and further referred to the two groups as “Invention I.” When the applicant traversed, the Examiner’s response was that the applicant had admitted in the specification that the groups were “different embodiments” and therefore restriction was proper.
On petition, the Office agreed with the applicant and pointed out that even if the embodiments are independent and distinct, they are not restrictable unless there is a serious search burden.
So, be on the lookout for unsupported search burdens when determining whether it might be possible to overturn a restriction.