Patent examiners at the USPTO issue a fair number of restrictions (see some data here from bigpatentdata.com). Thus, patent practitioners need to know how to respond to restrictions, and the implications of them on downstream prosecution. And to do that, one needs to understand the language of and (purported) logic of restrictions.

One issue that seems to confound many involved in the process is the notion of species and species restrictions. Importantly, claims are not species. Even the MPEP at 8063041(d) confirms this:

Claims are definitions or descriptions of inventions. Claims themselves are never species. The scope of a claim may be limited to a single disclosed embodiment (i.e., a single species, and thus be designated a specific species claim). Alternatively, a claim may encompass two or more of the disclosed embodiments (and thus be designated a generic or genus claim).

Species always refer to the different embodiments of the invention.

Many times examiners mix up these issues and issue restrictions such as the following (from SN 14171013):

This is usually followed by some cutting and pasting from the claims about how the claims include different features. It’s easy to take this approach because the examiner doesn’t really even have to understand or do any thinking - different claims sets always have at least some different language to point to. And most times the applicant gives in and just elects a group without traverse.

The problem here is that this type of restriction is completely wrong and is not authorized by any controlling authority. Species are not claims so even the original premise of this restriction is incorrect.

In this particular case, the applicant did traverse and then challenge the restriction by petition. The applicant actually even offered up a proper way to restrict the claims (apparatus/method restriction in which claims 17-21 would be grouped with claims 1-8). But, as is typical, responsive to the applicant’s original traverse the examiner just maintained the restriction. When the applicant petitioned, they pointed out the basic concept that claims are not species and that the specification disclosed a single embodiment. As noted in the MPEP 806, “where the claims of an application define the same essential characteristics of a single disclosed embodiment of an invention, restriction therebetween should never be required. This is because the claims are not directed to distinct inventions; rather they are different definitions of the same disclosed subject matter, varying in breadth or scope of definition.“

The Office agreed and granted the petition and the applicant then obtained allowance of all claims. Had the examiner simply read the original traverse and re-issued the restriction as system/method, likely the applicant would have accepted the situation. But in the end, the applicant’s shrewd use of a traverse and petition saved the cost of two divisional applications, plus the prosecution of those divisionals, plus the maintenance fees of those divisions, plus the lost patent term on the front end of those divisionals - no small amount of money any way you look at it.