FOIA Follow-Up... More on Improper Restrictions

As mentioned in previous posts, we recently filed FOIA requests to obtain some updates on what is happening with restrictions and corresponding petitions at the USPTO. We've been going through hundreds of cases recently looking for trends, tricks, and overly bureaucratic decisions to bring to our readers' attention.

One issue that shows up with surprising consistency is where an Examiner applies the wrong set of rules to restrict the claims. Specifically, national phase filings from a PCT application follow the Unity of Invention rules, whereas regular filings follow the more complicated and cumbersome restriction rules related to independent or distinct inventions. We've covered many of the issues in restriction practice in previous posts (here is a link to about 15 of them), but never this simple issue. Yet, as illustrated in US 14/408,999, it sometimes requires a petition to force the Examiner to apply the right set of rules.

Looking into this case illustrates how Examiners sometimes try to cover-up their misapplication of the rules after the fact and deny applicants basic principles of due process. Here, the application relates to one of Ericsson's wireless communication network methods for enabling the utilization of degrees of freedom previously unused by providing a shift to indicate one or more additional information bits, opening up the potential to improve latency and bandwidth utilization in legacy wireless communication networks. The application is a national phase filing, and thus unity of invention rules apply (37 CFR 1.475). However, the Examiner simply applied convention restriction practice, asserting the application included distinct inventions related as sub-combinations usable together in a single combination. The applicant traversed, yet the Examiner maintained his position:


As you can see here, the Examiner obviously realized his mistake and so tried to cover it up by paying lip service to elements not having a common special technical feature. While this approach actually works most of the time, Ericsson was having none of it and petitioned. Ericsson had two points going in its favor - first the Examiner applied the wrong standard, and second when you actually looked at the claim groups it was clear that the receiver was required in the same way in both claim groups and so the Examiner's cover-up reasoning was technically incorrect. The Office of Petitions therefore had no real option for denying the petition and found as follows:

petition decision.png

So, do not give up hope when the Examiner uses the wrong standard in restricting the claims and consider forcing the Office to properly examine the claims through a sraightforward petition.