Restriction After Appeal?

Numerous previous posts have discussed the dreaded restriction requirements made by Examiners at the USPTO. These increase costs, cause delays, and can severely restrict an applicant's ability to amend claims. While there are times where restrictions are reasonably applied by the Office, they are too often used by Examiners as a weapon to wear down applicants.

One such example is where prosecution is re-opened responsive to a strong appeal brief for the purpose of entering a restriction. Consider the situation - you've been through several rounds of prosecution, decided the Examiner is being unreasonable and so now you have invested in an appeal. And, you feel it is a good, strong brief and that at least you will have a good chance with the Board. However, you never get to the Board because the Office re-opens prosecution, and issues a restriction to boot.

Does this happen often? Hopefully not often, but it does happen with some regularity.

Looking to the rules that govern the Office, there is no basis for issuing a restriction after an appeal brief is filed. MPEP 1207 states that after an appeal brief under 37 CFR 41.37 has been filed and the examiner has considered the issues on appeal, the examiner may:

(A) reopen prosecution to enter a new ground of rejection with approval from the supervisory patent examiner (see MPEP § 1207.04);
(B) allow the application if the examiner determines that the rejections have been overcome and no new ground of rejection is appropriate; or
(C) maintain the appeal by conducting an appeal conference (MPEP § 1207.01) and drafting an examiner’s. See MPEP 1207.

Entering a restriction is nowhere on this list. Further, since the restriction is set forth without any rejections (as the Examiner is usually aiming to do a new search to remedy the improper rejections pointed out in the Brief), the restriction does not actually provide a new ground of rejection (as a restriction is not a ground rejection). What makes this action so egregious is that MPEP 1207.04 goes to some length at counseling Examiners on the proper type of behavior when reopening prosecution:

The examiner may, with approval from the supervisory patent examiner, reopen prosecution to enter a new ground of rejection in response to appellant’s brief. A new ground as used in this subsection includes both a new ground that would not be proper in an examiner's answer as described in MPEP § 1207.03, subsection II and a new ground that would be proper (with appropriate supervisory approval) as described in MPEP § 1207.03, subsection III. In deciding whether to reopen prosecution or to add a new ground of rejection to an examiner's answer where proper under MPEP § 1207.03 et seq., examiners and their supervisors should consider the degree to which the rejection previously of record is being changed, any previous reopenings after appeal brief, and the overall pendency of the application.

So, if you have the unfortunate experience of receiving a restriction requirement responsive to your brief, consider a petition against the action as being improper and a violation of the rules and regulations governing the USPTO, and thus a violation of the Administrative Procedure Act against illegal agency behavior.