As indicated in previous posts, we have been reviewing the results of our FOIA request regarding the out come of restriction petitions across the USPTO. Today we review an example of how to attack an "election by original presentation" restriction that examiners sometimes use to limit an applicant's ability to make amendments to avoid cited art. This can be an effective tool for the examiner and making it easy to maintain rejections. On the flip side, these restrictions can be game changers in terms of destroying an applicant's chances in overcoming rejections.
An "election by original presentation" restriction is simply a restriction requirement made sometime after substantive prosecution begins. Examiners typically cite 37 CFR 1.142(b) and MPEP 821.03. The rule confirms that "[i]f, after an office action on an application, 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..." However, some examiners take this rule in isolation and believe that they can skip the fundamental elements of a proper restriction - namely establishing that the claims are independent and distinct, and that there is a serious search burden.
NXP had a case in point and properly petitioned the restriction straight away. Specifically, in US 14/645,198, related to an antenna tuning circuit, NXP filed an amendment responsive to the first office action to add an additional independent claim that was more specific than the other pending independent claim 1. The examiner objected, and refused to consider the new claims because they were allegedly restrictable. The examiner explained the restriction as follows:
Claims 1 and 10, as subsequently amended, illustrated a substantial overlap in elements:
The situation here is common, and NXP took the sensible step of petitioning the restriction. Even though the examiner is relying on election by original presentation, that does not relieve the examiner of the duty in establishing a proper restriction in the first place. NXP pointed out these issues in its petition and the Office agreed, granting the petition. The Office concluded that:
So, the next time an examiner improperly tries to limit your amendments by relying on election by origional presentation rationale, do not be afraid to petition and point out the examiner's failure to establish a proper restriction in the first place, such as by failing to establish a serious search burden, or failing to provide a proper explanation of how the claims are independent and distinct.