Restrictions that are rejections in disguise

Restriction requirements (or election of species) are supposed to be issued by the USPTO when the Examiner determines that there are multiple and/or distinct inventions claimed. The result is that an Applicant is required to elect one invention for prosecution on the merits. Based on the Applicant’s election, the Examiner proceeds to then search and examine only the elected claims, unless the Applicant can convince the Examiner to withdraw the restriction. The Applicant is, of course, able to file a divisional application to pursue non-elected claims. 

Restrictions continue to be a major source of increased expense and delay for Applicants. While there are certainly many situations where restriction is warranted (and even beneficial to an Applicant), some restrictions do more than simply limit the number of claims being examined. In fact, sometimes the more troubling impact of a restriction is to limit the Applicant's ability to make future amendments.  

37 CFR 1.145 explains that, after an office action on an application, if the Applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered, subject to reconsideration and review as provided in §§ 1.143 and 1.144. The Examiner can even reject the response (as non-responsive) if all claims are amended to be directed to a different invention (as determined by the Examiner). This can cause significant problems for the Applicant, as well as a significant waste of resources. While one can challenge these actions by Petition, the deadline clock does not stop and there is the fundamental problem that restrictions can be difficult to challenge. 

Consider how an Examiner could use restrictions to frustrate the examination process for applicants (not that Examiners do, but the unchecked power lends itself to the potential for abuse). In virtually every case, a restriction is issued dividing the application into as many parts as possible, forcing Applicant to elect one (e.g., figure-based species restriction). Applicant then elects one figure and is forced to limit all future amendments in the application to only that figure, lest the amendments be asserted to be directed to a non-elected invention and subsequently restricted, or not entered.  Applicant is left petitioning not only the initial restriction, but each subsequent instance where amendments are asserted to be outside the elected matter. At the same time, Applicant is trying to make amendments to distinguish cited art.

There are some things Applicants can do to limit the potential for such situations. As an initial matter, restrictions among figures or separate claims of the same type (e.g., method/method, or system/system) should be routinely traversed to maintain the ability to petition, and thus amend, if needed. Without the initial traversal, the Applicant may have little chance at subsequently petitioning the Examiner's refusal to consider an amendment. Further, the cost of traversing, and the negative statements that can be used against the Applicant, can be minimized as Applicants are not required to list every reason for the traversal.