Overlap in Scope

One area that is a constant headache for clients is restriction requirements from the USPTO. Clients often have a hard time and feel that they are being put through the ringer by an overly-bloated bureaucracy.  On the other side, Examiners often have limited time to examine disparate claim sets in a single application.  In any event, restrictions are very common, and due to the complexity of the rules many Applicants simply give in rather than spend the time and energy to argue.  The incentives to give in are often exacerbated by what appears to be convoluted and illogical reasoning by the Office of Petitions.  

It is possible to successfully petition improper restrictions of certain types. One area that is inconsistent, however, relates to restrictions between related processes.  The rule governing such restrictions is set forth in MPEP § 806.05(j), which explains that the related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants.  Particularly with regard to criterion (2) (overlap in scope), the Office sometimes interprets this to varying degrees.

One example where this argument was successful for an application was in US 13/649,098. Here, the attorney representing the Applicant (Mr. Cahill) did everything right.  The petition was filed within 2 months of the Final rejection and set forth a clear example of how the restricted claims overlapped in scope.  The Office of Petitions agreed to overturn the restriction.  Now, the Examiner will have to re-open prosecution, examine the claims, and issue a new, non-final rejection.  Thus, the Applicant now gets another round of prosecution for free (without RCE) due to the strategic way in which the attorney handled the petition and overall prosecution.