Suppose an examiner requires election of one of three inventions…

Fran,

I am definitely still interested in an answer. The fact that it takes a little time is not a big concern. I sent in a response to Office Action on divisional requiring we pick a species Nov. 30. Didn’t amend claims to change the main Invention III claim back to an independent claim, but can do that in another amendment if appropriate.

I am preparing a expanded description of the situation to hopefully help your experts in resolving this issue/question. I've also done some research which I will pass on to you although you may well be familiar with it. I didn't want to give you all too much background to read, but more may be helpful.

Some additional background information has already been provided in a series of previous questions of mine and responses (most if not all by Monty Simmons) which I assume you can access, but not all of that is related to this question. If you want to access those questions/responses and can't get to them, or I could make it easier for you, let me know.

I will get back to you soon with more information. Thank you in advance for your efforts on this.

Fran,

A little background on Invention I, II, and III. There are four questions after this background information, three of which I have commented on. Feel free to put your responses anywhere in the below (perhaps in bold) if that makes your job easier.

According to parent examiner, Invention I “drawn to a dual-drapery rod assembly” was defined by claims 1 – 5, Invention II “drawn to a drapery rod assembly” was defined by claims 6 – 13, and Invention III “drawn to a motorized assembly” was defined by claims 14 – 19 (1, 6, and 14 were independent claims).

Issues regarding 35 U.S.C. § 121 safe harbor protection against double-patenting may arise because some claims in the divisional were added or were modifications of parent application claims.

A. Parent application independent claim 14 of Invention III involving a motorized drapery rod assembly was modified in the divisional to make it dependent on the divisional claim derived from independent parent application claim 6 of Invention II.

B. Claims 10 – 13 of Invention II, drawn to a drapery rod assembly, were modified to increase their differentiation from the dual-drapery rod assembly of Invention I. The drapery rod assembly of Invention II was comprised of both dependent claims involving single-drapery rod assemblies (claims 7 and its dependent claims 8 and 9) and dependent claims involving dual-drapery rod assemblies (10 and its dependent claims 11 - 13).

Independent claim 1 of Invention I involves a dual-drapery rod “adapted to be attached to two sets of drapery, supporting the first set on said back section and the second set on said front and intermediate sections of said drapery rod”. This appears to suggest that the left and right back sections engage with each other, and the elected species in the parent application showed the back sections inter-engaged. In contrast, dependent claim 10 of parent application Invention II described “The drapery-rod assembly of claim 6 wherein said drapery rod assembly is a dual-drapery assembly” and ended with “whereby said assembly layers drapery when said left and right back sections engage each other or an existing single-drapery rod”.

In the divisional application, parent application claim 10 of Invention II was modified to differentiate it more from allowed claim 1 of Invention I, ending the divisional claim derived from claim 10 with “whereby said left and right back sections are adapted to engage an existing single drapery rod to form a dual-drapery rod”. The three claims in parent app. dependent on claim 10 involving single drapery rods with apertures penetrating them (like the single drapery rods described in parent claims 7 – 9) were modified somewhat so the assembly was “adapted to engage” such a single drapery rod to become a dual-drapery rod.

Three claims not in the parent but dependent on the claim derived from parent app claim 10 were added describing a drapery rod assembly adapted to engage a single drapery rod (with no mention of apertures in that rod). In the Remarks section of our Office Action response, we noted that these new and modified claims “describe drapery rod assemblies designed to convert existing telescopically compatible single-drapery rods into dual-drapery rods. The drapery-rod assemblies become dual-drapery rod assemblies only when engaged with those single-drapery rods.”

The above seems to suggest the following double-patenting related questions (you don’t need to answer in this order if another is easier for you):

1) Will the terminal disclaimer to be filed take care of any non-statutory double-patenting objections that might arise connected to this divisional?

2) Does the above suggest the application may constitute statutory double-patenting if the safe harbor provision of 35 U.S.C. § 121 is for some reason not applicable (see 3 and 4 for possible reasons)?

3) Do the additions or modifications of claims related to parent application claims 10 – 13 (involving drapery rod assemblies that are dual-drapery rod assemblies) interfere with/void the safe harbor provision against double-patenting offered to divisional applications resulting from required restrictions?

4) Does the combining of parent application Invention II and III utilizing a common independent claim (Invention III independent claim modified to depend upon independent claim derived/functionally equivalent to independent claim of Invention II) interfere with/void safe harbor provision?

I’ve made some comments on questions 2) - 4) below which may or may not make it easier for you to respond.

? 2) Thoughts - MPEP 804 II says the statutory basis for double-patenting comes into play “where the claims of an application are substantively the same as those of a first patent . . . the term ‘same invention,’ in this context, means an invention drawn to identical subject matter.” In re Walles addresses the question of what constitutes the same invention. The same invention test of Walles requires the court to determine independently exactly what subject matter is defined in each set of claims and compare the two. Before the two sets of claims may be said to define the "same invention," they must in fact claim the exact same subject matter.

I believe the above suggests one looks at the sets of claims to determine statutory double patenting. There is no way the totality of claims of Invention I (now patent #8,479,931B1) describes the same invention as Invention II or III, but allowed Invention I independent claim 1 is functionally equivalent to dependent Invention II parent application claim 10 except the latter states the back sections can inter-engage or engage with an existing single-drapery rod and the former suggests (but doesn’t explicitly state) the back sections inter-engage. The difference is accentuated in the divisional claim that says the back sections engage an existing single drapery rod (and the species elected in the divisional shows this engagement with a single-drapery rod).

?3) involving additions or modifications of claims related to parent application claims 10 – 13:

The modifications made regarding parent application claims 10 – 13 increase the differentiation between the drapery rod assembly of Invention II and the dual-drapery rod assembly of allowed claim 1 of Invention I. I believe that is a good thing, but it does modify parent claims and thus may bring consonance with parent required restriction in question. Also, three claims have been added that are dependent on the divisional claim derived from parent application claim 10.

When divisional apps include claims modified and/or added from parent application, the issue of consonance and maintaining the line of demarcation of the parent required restriction comes into play. The additional or modified claims must be consonant in scope to the original claims subject to restriction in the parent. The divisional claim derived but modified from parent application claim 10 is narrower in scope (further differentiating it from Invention I). That would appear to suggest it is within the scope of Invention II since it is narrower parent application claim 10. The three modified and three added claims also appear within the scope of Invention II since they are dependent on the divisional claim derived from parent application claim 10.

? 4) Does the combining of parent application Invention II and III utilizing a common independent claim pose a safe haven problem?

“In order for consonance to exist, the line of demarcation between the independent and distinct inventions identified by the examiner in the requirement for restriction must be maintained “(MPEP 804.01 A).

In Symbol Technologies, Inc. v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991), the court further defined consonance

“Consonance requires that the line of demarcation between the "independent and distinct inventions" that prompted the restriction requirement be maintained. Though the claims may be amended, they must not be so amended as to bring them back over the line imposed in the restriction requirement. Where that line is crossed the prohibition of the third sentence of Section 121 does not apply. Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 916 F.2d 683, 688, 16

USPQ2d 1436, 1440 (Fed.Cir.1990). The corollary to this Court's statement in Gerber Garment is that new or amended claims in a divisional application are entitled to the benefit of Sec. 121 if the claims do not cross the line of demarcation drawn around the invention elected in the restriction requirement.”

Comment; It appears to me from the above that the “line of demarcation” that must be maintained refers only to the line of demarcation drawn around the invention elected. If that is the case, then combining II and III with a common independent claim maintains the required line of demarcation. If the line(s) of demarcation between the non-elected Inventions II and III must also be maintained, combining the two would not satisfy that requirement.

Continue please. I don't know whether Monty Simmons is out on vacation or not, but if not, you might contact him. When he asked for more information on 11/26 (I believe), I responded but indicated I needed an answer before I mailed my OA response by Dec. 1. Now it has occurred to me I can always file another amendment if necessary, so still interested in an answer.