As we have discussed in numerous previous posts (see here for example), restriction requirements can have significant downstream effects on patent prosecution. Unless you have experienced it first-hand, this might seem implausable and sound like a far-fetched scare tactic. Rest assured, this chicken will eventually come home to roost in one of your applications.
A recent PTAB case illustrates the issue perfectly. The inventor, Charles Bennet, developed a new holster design. There was no dispute from the Examiner that the examined claims were inventive. The issue was that the examined claims were amended to include features allegedly from an unelected embodiment, and thus were rejected under Section 112. Despite the applicant’s attempts to address this, the Examiner held firm on the rejection leaving the small business inventor no choice but to appeal.
The well-written brief explains the issue in detail. The examiner had asserted that because the support in the specification for one of the claimed features was not in the elected figure, it was new matter and not supported by the specification to add it to the examined claims. The response to this was summarized in the brief as follows:
The specification made clear that the claimed features could be used with the elected embodiment and the applicant correctly pointed out that there is no basis for eliminating part of the specification in terms of the ability to support claims simply due to an election.
The PTAB agreed that the rejection was improper and reversed. While the PTAB provides a general explanation that the examiner failed to establish a proper basis for the rejection, it would have been nice if the PTAB addressed the restriction issue directly. Also, the applicant here never did petition the restriction (even though they initially traversed) - a petition would have offered an additional path the challenge the examiner’s actions.
So, if a response to restriction is blocking your ability to amend, make sure that the Examiner has a valid reason and remember to traverse such action if you believe the new feature is disclosed with the elected embodiment.