Selecting the Right Group to Maximize Chances for Overturning a Restriction

As discussed previously, restriction requirements can significantly increase expenses and delay at the US Patent and Trademark Office, as well as reduce the Applicant's ability to strategically amend the claims.

When presented with a restriction between groups, one factor to consider in making an election is how to maximize arguments for an eventual petition, if needed.  Specifically, when electing between groups where the scope of one group is within another group, it can be advantageous to elect the group that includes all of the elements (and more) of the other group.  In this way, the Applicant can argue that there is no serious search burden, as the search for the elected group would include the elements of the non-elected group. 

US 13/153,128 illustrates this tactic.  Here, the Applicant traversed the restriction and petitioned after filing a response to the standing prior art rejections.  The Applicant was careful to keep amendments consistent between the restricted claims during prosecution to maintain the ability to argue that a search for the elected claim (claim 1) necessarily included searching for the elements of the non-elected claim (claim 2). 

In the end, the Office of Petitions agreed with the Applicant, noting that the Examiner had failed to establish a serious search burden.  When faced with the prospect of having to issue a new, non-final rejection, the Examiner in this case was sufficiently convinced by the Applicant's prior art arguments and thus allowed the application.