Keg treatment patent applicant faced with improper restrictions mixing up Unity and Intended Use


Many examiners at the USPTO treat applicants fairly. Clients put their faith in a patent practitioner to represent them, but the client also inherently puts their faith in the Federal Government expecting to be treated fairly. That includes not simply following the applicable statutes and rules, but also approaching the examination process as a fair arbitrator of the facts.

Unfortunately, sometimes it seems an applicant is not treated fairly, and reading through the history of some files creates a very strong impression that an examiner is doing everything possible to make prosecution difficult. While even I enjoy the challenge of vigorous rejections, making things more difficult for everyone does not just waste the client's money and time, but it also wastes considerable taxpayer dollars and/or user fees depending on how the USPTO operates financially. 

A case in point is SN 14/760,287. The invention relates to a system and method for the treatment of kegs that utilize certain treatment steps.  The invention aims to improve the cleaning of kegs before they are returned to breweries so that less energy is used in the cleaning.

While the prosecution history has numerous examples of unreasonable actions taken by the Office, a nice illustrative example is with regard to a Unity of Invention restriction (as the application is a national stage of a PCT filing and thus is subject to Unity of Invention rules).

In response to the initial Unity issue raised by the Office between the system and method claims, the applicant amended the apparatus claims to make clear that they maintained unity with the method claims. Specifically, the applicant cited Rule 1.475(b)(4) which specifies that

An international or a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:   ... (4) A process and an apparatus or means specifically designed for carrying out the said process...

Further, the applicant amended the system claims to require "an apparatus specifically designed for treating an interior of a keg" to match the method claim.

The Examiner, however, maintained the restriction partly on the basis that such an amendment was "intended use." The doctrine of intended use relates to whether a feature of a structural claim is merely an intended use of the device, as opposed to a functional element that must be considered when evaluating whether the prior art shows all claimed limitations. However, the doctrine of intended use has no precedent for being used as part of the Unity of Invention analysis. The applicant pointed this issue out in its petition against the restriction. While the petition was granted, the Office granted the petition on different grounds (see below) and so never addressed this issue directly. However, it seems straightforward that if the CFRs expressly provide safe harbor for an apparatus specifically designed for carrying out the process as having unity, it would be clearly improper and contrary to the rules to ignore claim limitations stating exactly that. That an examiner would waste the applicant's time and money, as well as waste taxpayer dollars on such specious argument is disappointing. 

Another example of improper examination in this file also relates to this same restriction. Here, the Applicant responded to the initial restriction without traverse, noting that the restriction was obviated because of the above-mentioned amendments. I.e., the Unity of Invention restriction of the original claims was not traversed, but rather the system claim was amended to render it inapplicable. Shockingly, the Examiner then treated this as a lack of traverse of even later restrictions among the claims. This is so clearly wrong that with regard to the above petition, the Office granted the petition on that ground alone

So, if you have a Unity of Invention issue, do not be afraid to follow the safe harbor options of the CFRs to avoid restrictions of the national stage application in the US. Also, to avoid the potential for an Examiner improperly holding you to an election without traverse, always traverse if you make amendments to overcome the restriction.