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Question on the implications of restriction requirement on…

For Mr. Simmons: question on...

For Mr. Simmons: question on the implications of restriction requirement on divisional applications. Using a hypothetical case where a utility patent application discloses 2 embodiments: one with innovative feature A and B, the other with feature C. Examiner issued an “election of species” requirement to proceed with either 1st or 2nd embodiment. Because feature A in 1st embodiment is most valuable, applicant went with 1st embodiment with claims directed to feature A only (feature B was not claimed). Later, in a divisional application to cover the unelected species of 2nd embodiment, can the applicant still claim feature B of the 1st embodiment – because it was never claimed before? Or, the election of species dictates that all divisionals cannot touch anything of the 1st embodiment because it was the election for the parent application, regardless of whether all features of the 1st embodiment have been previously claimed?

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Answered in 8 days by:

8/27/2016

IP Lawyer: montysimmons, Patent Prosecutor replied 6 years ago

montysimmons, Patent Prosecutor

Category: Intellectual Property Law

Satisfied Customers: 328

Experience: Electrical Engineer, South Carolina Attorney, Member of US Patent Bar

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Sorry for the long wait. I have been extremely busy.

Those are complicated questions. A restriction requirement usually identifies the various embodiments and then requires the applicant to select one.

IF the Examiner identified two inventions with Invention X having features A and B and Invention Y having feature C, then you should not claim Invention Y having feature C and Feature B in a continuing application.

If I have not answered your question please keep asking until you are satisfied.

Customer reply replied 6 years ago

Thanks much for taking the question, Mr. Simmons. Your answers have always appeared to be thorough and to the point, and I believe many others have appreciated your advice too.Continuing from your answer and to simplify the question, say Invention X has features A & B, Invention Y has only feature B. Invention Y is a variation of Invention X. Without feature A, Invention X equals Invention Y. Feature A was claimed in the original application (after electing Invention X). The only issue is that feature B is thoroughly illustrated (e.g. in drawings) with Invention X and NOT sufficiently described with Invention Y (112 issue here). Now, while claiming feature B in a divisional, can it rely on the illustrations of Invention X, although the rationale of the divisional is supposed to be directing to Invention Y?I am quite positive that it's a yes, because the "written description" for the divisional application includes the entire disclosure of the parent application. But in case you positively know it's not the case, I'd like to get your expert comments.

IP Lawyer: montysimmons, Patent Prosecutor replied 6 years ago

Thank you for the kind words.

Assume : Invention X contains Features A and B

Assume : Invention Y contains Feature B.

Assume : Without Feature B invention X becomes invention Y.

Assume: The Examiner contends Invention X and Y are so different that a restriction requirement is necessary and the inventor must pick one invention (X or Y) for the current application and pursue the other invention in a continuing application.

For such example, the features "B" and "A" are not merely features, in my mind, but, perhaps, from a patentability perspective, they are the inventions when associated with one or both of features X or Y. Just another way of looking at things.

That said, based on your facts, if Invention X (comprising A and B) has been enabled by the specification, it seems highly likely that Invention Y (comprising only B) has been enabled by the specification. . . . unless one of ordinary skill in the art, after reading the written description, would not know how to make or use "X" without feature "A". So the answer may depend on the relationship between features A and B. If it is not obvious, to one of ordinary skill in the art, how to make "B" work without "A" you may have a problem.

At bottom, if X comprising A and B is enabled, then it is highly likely that Y comprising only B is also enabled where there are no other material differences between X and Y.

I can tell you this for sure: If something (call it "B") is not enabled in a parent application, then "B" will not be enabled in a divisional application (without regard to restriction requirements). If "B", not enabled in a parent, but is enabled in a continuing application, such continuing application would necessarily have to introduce new matter, and thus, is properly called a Continuation in Part (not a Divisional).

FYI - At the beginning of the Detailed Description section of a patent application, I always add the following text:

DETAILED DESCRIPTION
Reference now will be made in detail to the embodiments of the invention, one or more examples of which are set forth below. Each example is provided by way of explanation of the invention, not limitation of the invention. In fact, it will be apparent to those skilled in the art that various modifications and variations can be made in the present invention without departing from the scope or spirit of the invention. For instance, features illustrated or described as part of one embodiment can be used on another embodiment to yield a still further embodiment. Thus, it is intended that the present invention covers such modifications and variations as come within the scope of the appended claims and their equivalents. Other objects, features, and aspects of the present invention are disclosed in or may be determined from the following detailed description.

Customer reply replied 6 years ago

One word - brilliant!
It makes perfect sense to me and thank you so much for sharing your best practice at the end! I'm sure others who you have helped would agree with me that you are truly a top-notch expert here for both your knowledge and willingness to spend the time delivering detailed, high quality answers!P.S. I was directing another question (numbering of steps in claims) to your attention quite a while ago but it got closed by justanswer mistakenly thinking it was a duplicate - I have asked them to re-open the question and mark with high priority. Thank you for your attention in advance.I was trying to rate the answer but the stars were grayed out on me - it happened like this before as I remember so please do the same trick you did last time from your end to complete/enable your answer for rating and I'll send 5 stars right away ...

IP Lawyer: montysimmons, Patent Prosecutor replied 6 years ago

Thank you for the kind words.

The rating issue is probably may fault. I believe I must click "I'm ready to be rated button."

I will do that now.

montysimmons, Patent Prosecutor

Category: Intellectual Property Law

Satisfied Customers: 328

Experience: Electrical Engineer, South Carolina Attorney, Member of US Patent Bar

Verified

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