Election of species based on Figures

Restriction requirements are a never-ending source of applicant expense and delay. While in some cases an applicant may be happy with restrictions, often they are not.

One type of restriction that can be cumbersome is an Election of Species requirement when an applicant is required to select among their own figures. But, as illustrated in the example of SN 14/601,183, there are ways to push back against such restrictions.

In this case, the invention relates to a radar signal processing circuit with various components such as a mixer, LP filter, DC blocking circuits, etc. The application included various figures, including several examples of a DC blocking circuit (FIGS. 3a-b) and several examples of a radar system including the various components (FIGS. 4a-b).

The Office asserted that FIGS. 3a-b were a species that was separate and distinct from that of FIGS. 4a-b, because of “mutually exclusive” characteristics of such species. This of course was incorrect since the specification made clear that the elements in FIGS. 3 were sub-blocks of the system in FIGS. 4. The applicant was forced to petition the issue and the Office agreed citing MPEP 806.04(b). From the petition decision:

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Thus, as explained in the MPEP, if the alleged species are related (such as when they are explicitly linked together in the specification, as was the case here, the Office must make additional findings. Namely, the examiner must further establish a two-part test - both the practice applicable to election of species and the practice applicable to other types of restrictions. In the above case, the Office concluded that the Office failed to follow the two-part test as so the petition was granted.

Whether the examiner could have made out a case under the two-part test was not reached because the examiner never made such findings in the first place. This fact pattern is very common - it is rare for an examiner to actually provide details of how the two-part test is satisfied. As such, whenever an applicant can establish that alleged species are related in terms of design and operation (e.g., the specification explicitly states these facts), it is likely that the applicant can win the petition since examiners rarely, if ever, go through the trouble of making arguments under both parts of the test as set forth in MPEP 806.04(b).

So, when responding to election of species requirements, look out for opportunities to set up a successful petition should it be strategically useful.