Improper Restrictions

Previous posts have discussed various aspects of restriction requirements, which is when the Patent Office refuses to examine a whole application and instead selects only a subset of the invention for examination. 

Whether or not Patent Office examiners may take advantage of their bureaucratic powers to reduce their workload by issuing improper restrictions can be left for another day. This post addresses the unusual situation where an Examiner refuses to enter an amendment (made in response to a non-final rejection) because it would allegedly be restrictable. 

While some examiner seem to think they can get away with this approach, the law is not on their side. 37 CFR 1.121 specifies that the Applicant may amend (A) before or after the first Office action and also after the second Office actions as specified in 37 CFR 1.112.  See also 37 CFR 1.111.  Even if claim amendments cause a claim to be properly restrictable, the amendments must still be entered and then the claim withdrawn.  See, e.g., 37 CFR 1.142(b) and MPEP 821.03.  

In a recent example, a claim was amended in response to a non-final rejection.  In a subsequently final OA, the Examiner issued a restriction against the claim in response to the amendment.  However, the Examiner actually refused to enter the amendment to the claim at all.  The Examiner then only substantively rejected the unamended claim.  

While it seems burdensome, one approach to address this behavior (without having to pay for an RCE) is to Petition. Such a petition would argue that the Examiner has failed to follow the applicable statute, rules, and patent office guidelines (MPEP) in this regard.  First, the amendment to the claim must be entered as it was submitted responsive to a non-final rejection.  Second, if the Office wants to restrict the claim, then from a procedural point of view it must first enter the amendment to be able to do so.  There is no authority that allows the Office to refuse entry of an amendment simply because it may create a restriction.  Third, the Examiner cannot at the same time maintain a rejection of the un-amended claim.