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Restriction requirement response 3 strategies

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Jonathan E Olson

The document discusses three strategies to minimize costs and delays in U.S. Patent and Trademark Office (USPTO) restriction and election practices, presenting various scenarios involving different patent species. The strategies include scenarios of cooperation and aggression towards the examiner's requirements and restrictions on claims. It emphasizes the need for careful navigation of the election process regarding distinct patent claims to prevent claims from being withdrawn.

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Three Strategies for Minimizing Cost and Delay in Restriction and Election Practice in the USPTO (using Scenarios 1 through 5)
Assumptions
1. Some PTO examiners will not exercise discretion in our favor. 2. Some PTO examiners perceive that they have the moral high ground. Assumptions
1. Some PTO examiners will not exercise discretion in our favor. 2. Some PTO examiners perceive that they have the moral high ground. 3. Some PTO examiners recognize that petition and appeal practice is unfamiliar to many practitioners and too costly for many clients. 4. It is not certain that a meritorious petition or appeal will get a proper response at the PTO. Assumptions
1. Some PTO examiners will not exercise discretion in our favor. 2. Some PTO examiners perceive that they have the moral high ground. 3. Some PTO examiners recognize that petition and appeal practice is unfamiliar to many practitioners and too costly for many clients. 4. It is not certain that a meritorious petition or appeal will get a proper response at the PTO. 5. If we have to file petitions and appeals, we want to be in the best possible position to do so. 6. We also want few claims to be withdrawn from consideration, if any, even while petitions and appeals are pending. Assumptions
41. (ORIGINAL) A medical system comprising: a first module configured to do some really important stuff; and a second module operably coupled to the first module and configured to do other stuff. 42. (ORIGINAL) The medical system of claim 41 in which the first module comprises: a first dispenser operably coupled with at least the first module. 43. (ORIGINAL) The medical system of claim 41 in which the first module comprises: more than one dose of a first therapeutic material within the second module. 44. (ORIGINAL) The medical system of claim 41 in which the first module comprises: a second dispenser. 45. (ORIGINAL) The medical system of claim 41 in which the first module comprises: a support element operable for supporting the second module. 46. (ORIGINAL) The medical system of claim 41, further comprising: the second module configured to do the other stuff over a period of more than a day.
Applicant is required to elect one of the following patentably distinct species: Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module The species are independent or distinct because claims to the different species recite the mutually exclusive characteristics of such species . . . . [To be complete,] the reply to this requirement must include … (i) an election of a species to be examined even though the requirement may be traversed; and (ii) identification of the claims encompassing the elected species, including any claims subsequently added.
Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
Scenario #1 Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
“Grudging Cooperation” Scenario #1 Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
“Grudging Cooperation” I elect Species A, but WITH TRAVERSE !!! Scenario #1 Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
“Grudging Cooperation” I elect Species A, but WITH TRAVERSE !!! Scenario #1 Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
“Grudging Cooperation” I elect Species A, but WITH TRAVERSE !!! All claims are readable on Species A. Scenario #1 Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
“Grudging Cooperation” I elect Species A, but WITH TRAVERSE !!! All claims are readable on Species A. Claims 43-46 are drawn to non-elected species Scenario #1
“Grudging Cooperation” I elect Species A, but WITH TRAVERSE !!! All claims are readable on Species A. … and withdrawn from consideration. Claims 43-46 are drawn to non-elected species Scenario #1
“Grudging Cooperation” I elect Species A, but WITH TRAVERSE !!! All claims are readable on Species A. … and withdrawn from consideration. Claims 43-46 are drawn to non-elected species Scenario #1
Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module 4 Applicant respectfully calls the Examiner’s attention to this portion of the MPEP: Where two or more species are claimed, a requirement for restriction to a single species may be proper if the species are mutually exclusive. Claims to different species are mutually exclusive if one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second species and not the first. This may also be expressed by saying that to require restriction between claims limited to species, the claims must not overlap in scope. MPEP 806.04 (f) (emphasis added). The Examiner has indicated that species A through E of the present Restriction Requirement do not overlap, for example, but has not supported this view with any evidence or coherent explanation. Applicants accordingly request withdrawal of the present Restriction Requirement.
Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
Scenario #2 Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
Scenario #2 “Overt Aggression” Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
Scenario #2 It’s not possible for us to choose among these “Species.” “Overt Aggression” Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
Scenario #2 It’s not possible for us to choose among these “Species.” “Overt Aggression” Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
Scenario #2 It’s not possible for us to choose among these “Species.” “Overt Aggression”
Scenario #2 Applicant’s “response” is unresponsive. It’s not possible for us to choose among these “Species.” “Overt Aggression”
Scenario #2 Applicant’s “response” is unresponsive. It’s not possible for us to choose among these “Species.” “Overt Aggression” Comply or go abandoned.
Scenario #2 Applicant’s “response” is unresponsive. It’s not possible for us to choose among these “Species.” “Overt Aggression” Comply or go abandoned.
Strategy A: Picture Claims (narrow independent or dependent claims, often not commercially valuable, combining phrases of many dependent claims)
Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module 46. (ORIGINAL) The medical system of claim 41, further comprising: the second module configured to do the other stuff over a period of more than a day. 47. (NEW) The medical system of claim 46 in which the first module comprises: a first dispenser operably coupled with at least the first module; more than one dose of a first therapeutic material within the second module; a second dispenser; and a support element operable for supporting the second module.
Scenario #3 “Overt Aggression” Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
Scenario #3 We elect all five “Species.” “Overt Aggression” Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
Scenario #3 We elect all five “Species.” “Overt Aggression” Arg #1 . . . Arg #99 Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
Scenario #3 We elect all five “Species.” “Overt Aggression” Arg #1 . . . Arg #99 Claim 47 proves that the “Species” may overlap. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module 46. (ORIGINAL) The medical system of claim 41, further comprising: a second module, operable to remain at least partly within an esophagus or intestine of the digestive or respiratory tract for more than a day. 47. (NEW) The medical system of claim 46 in which the first module comprises: a first dispenser operably coupled with at least the first module; more than one dose of a first therapeutic material within the second module; a second dispenser; and a support element operable for supporting the second module.
Scenario #3 We elect all five “Species.” “Overt Aggression” Arg #1 . . . Arg #99 Claim 47 proves that the “Species” may overlap. Hmmm …
Scenario #3 We elect all five “Species.” “Overt Aggression” Arg #1 . . . Arg #99 Claim 47 proves that the “Species” may overlap. Hmmm … For no additional time or trouble, I have an opportunity to teach this rich clown some respect.
Scenario #3 Applicant’s “response” is unresponsive. We elect all five “Species.” “Overt Aggression” Arg #1 . . . Arg #99 Claim 47 proves that the “Species” may overlap.
Scenario #3 Applicant’s “response” is unresponsive. We elect all five “Species.” “Overt Aggression” Comply or go abandoned. Arg #1 . . . Arg #99 Claim 47 proves that the “Species” may overlap.
Scenario #3 Applicant’s “response” is unresponsive. We elect all five “Species.” “Overt Aggression” Comply or go abandoned. Arg #1 . . . Arg #99 Claim 47 proves that the “Species” may overlap.
Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
“Partial Aggression” Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
Strategy B: Partial Aggression (giving the Examiner an opportunity to save face and appear to win something even while reinforcing the message that the Restriction Requirement wasn’t worth the trouble)
Scenario #4 “Partial Aggression” Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
Scenario #4 We provisionally elect “Species” A – C. “Partial Aggression” Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
Scenario #4 We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
Scenario #4 We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module 46. (ORIGINAL) The medical system of claim 41, further comprising: a second module, operable to remain at least partly within an esophagus or intestine of the digestive or respiratory tract for more than a day. 47. (NEW) The medical system of claim 46 in which the first module comprises: a first dispenser operably coupled with at least the first module; more than one dose of a first therapeutic material within the second module; a second dispenser; and a support element operable for supporting the second module.
Scenario #4 We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Possible Response Hmmm … One Possible Response
Scenario #4 We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Possible Response Hmmm … At least I can tell my SPE that we excluded two species. And we can’t win on petition… One Possible Response
Scenario #4 We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Possible Response Hmmm … At least I can tell my SPE that we excluded two species. And we can’t win on petition… One Possible Response Accept the election and examine claims 41-44, and 46-47
Scenario #4 We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Another Possible Response
Scenario #4 Applicant’s “response” is unresponsive. We provisionally elect “Species” A – C. “Partial Aggression” Comply or go abandoned. If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Another Possible Response
Scenario #4 Applicant’s “response” is unresponsive. We provisionally elect “Species” A – C. “Partial Aggression” Comply or go abandoned. If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Another Possible Response Telephone Interview
Scenario #4 We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Another Possible Response But, at that telephone interview …
Scenario #4 You tried to draft around my Restriction Requirement. We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Another Possible Response
Scenario #4 You tried to draft around my Restriction Requirement. We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Another Possible Response To have claim 47 examined you must file an RCE.
Scenario #4 You tried to draft around my Restriction Requirement. We provisionally elect “Species” A – C. “Partial Aggression” To have claim 47 examined you must file an RCE. If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Another Possible Response
Strategy B: Partial Aggression (giving the Examiner an opportunity to save face and appear to win something even while reinforcing the message that the Restriction Requirement wasn’t worth the trouble)
Strategy C: Proactivity (filing early picture claims to preempt any notion that the Examiner’s Restriction Requirement deserves respect)
Scenario #5 not “NEW” 46. (ORIGINAL) The medical system of claim 41, further comprising: a second module, operable to remain at least partly within an esophagus or intestine of the digestive or respiratory tract for more than a day. 47. (PREVIOUSLY PRESENTED) The medical system of claim 46 in which the first module comprises: a first dispenser operably coupled with at least the first module; more than one dose of a first therapeutic material within the second module; a second dispenser; and a support element operable for supporting the second module.
Scenario #5 You tried to draft around my Restriction Requirement. Hypothetical Response
Scenario #5 You tried to draft around my Restriction Requirement. “Well Positioned” Hypothetical Response
Scenario #5 You tried to draft around my Restriction Requirement. “Well Positioned” Golly, we mainly just wanted to get at least claim 47 examined. Hypothetical Response
Scenario #5 “Well Positioned” Hmmm … Next time we see these picture claims, let’s not bother with a Restriction Requirement. Another Possible Response Hypothetical Response
Strategy C: Proactivity (filing early picture claims to preempt any notion that the Examiner’s Restriction Requirement deserves respect)
Proactivity (filing early picture claims to preempt any notion that the Examiner’s Restriction Requirement deserves respect) Partial Aggression (giving the Examiner an opportunity to save face and appear to win something even while reinforcing the message that the Restriction Requirement wasn’t worth the trouble) Picture Claims (narrow independent or dependent claims, often not commercially valuable, combining phrases of many dependent claims)
Restriction requirement response 3 strategies
What’s a “species”?
4 Applicant respectfully calls the Examiner’s attention to this portion of the MPEP: Where two or more species are claimed, a requirement for restriction to a single species may be proper if the species are mutually exclusive. Claims to different species are mutually exclusive if one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second species and not the first. This may also be expressed by saying that to require restriction between claims limited to species, the claims must not overlap in scope. MPEP 806.04 (f) (emphasis added). The Examiner has indicated that species A through E of the present Restriction Requirement do not overlap, for example, but has not supported this view with any evidence or coherent explanation. Applicants accordingly request withdrawal of the present Restriction Requirement. What’s a “species”?
Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module 4 Applicant respectfully calls the Examiner’s attention to this portion of the MPEP: Where two or more species are claimed, a requirement for restriction to a single species may be proper if the species are mutually exclusive. Claims to different species are mutually exclusive if one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second species and not the first. This may also be expressed by saying that to require restriction between claims limited to species, the claims must not overlap in scope. MPEP 806.04 (f) (emphasis added). The Examiner has indicated that species A through E of the present Restriction Requirement do not overlap, for example, but has not supported this view with any evidence or coherent explanation. Applicants accordingly request withdrawal of the present Restriction Requirement. What’s a “species”?
What’s a “species”? Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
What’s a “species”? Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module a species
When is a restriction requirement or species election proper? a species
When is a restriction requirement or species election proper? When there truly is no overlap between claimed combinations
Are these truly mutually exclusive? “treating a disease state” “… affecting a reptile” “… affecting a human” ???
Are these truly mutually exclusive? “an identifier of a pathogen” “… wherein the pathogen is a bacterium”“… wherein the pathogen is a virus” ???
Are these truly mutually exclusive? “implementing a therapeutic regimen” “… by a surgical procedure” “… without any surgery” ???
Petition Practice Points
1. Decisions of an examiner that are of a discretionary, procedural, or non-substantive nature and that are not directly connected with the merits of issues involving rejections of claims are typically reviewable by petition under 37 C.F.R. § 1.181. 2. Response due dates remain in effect irrespective of a petition. 3. I recommend that you traverse election of species requirements with care. 4. I recommend that you do not cancel claims that the Examiner has withdrawn from consideration, at least not until the RR is made final. 5. You must request reconsideration of the RR to qualify for petition. 6. A petition must be made (a) after the RR is repeated or made final and (b) before filing an appeal. 7. Most petitions for RR are granted in full or in part in ~ 90 days. (Nevertheless, less than 1% of RR’s are petitioned.) Petition Practice Points
1. Decisions of an examiner that are of a discretionary, procedural, or non-substantive nature and that are not directly connected with the merits of issues involving rejections of claims are typically reviewable by petition under 37 C.F.R. § 1.181. 2. Response due dates remain in effect irrespective of a petition. 3. I recommend that you traverse election of species requirements with care. 4. I recommend that you do not cancel claims that the Examiner has withdrawn from consideration, at least not until the RR is made final. 5. You must request reconsideration of the RR to qualify for petition. 6. A petition must be made (a) after the RR is repeated or made final and (b) before filing an appeal. 7. Most petitions for RR are granted in full or in part in ~ 90 days. (Nevertheless, less than 1% of RR’s are petitioned.) Petition Practice Points
1. Decisions of an examiner that are of a discretionary, procedural, or non-substantive nature and that are not directly connected with the merits of issues involving rejections of claims are typically reviewable by petition under 37 C.F.R. § 1.181. 2. Response due dates remain in effect irrespective of a petition. 3. I recommend that you traverse election of species requirements with care. 4. I recommend that you do not cancel claims that the Examiner has withdrawn from consideration, at least not until the RR is made final. 5. You must request reconsideration of the RR to qualify for petition. 6. A petition must be made (a) after the RR is repeated or made final and (b) before filing an appeal. 7. Most petitions for RR are granted in full or in part in ~ 90 days. (Nevertheless, less than 1% of RR’s are petitioned.) Petition Practice Points
1. Decisions of an examiner that are of a discretionary, procedural, or non-substantive nature and that are not directly connected with the merits of issues involving rejections of claims are typically reviewable by petition under 37 C.F.R. § 1.181. 2. Response due dates remain in effect irrespective of a petition. 3. I recommend that you traverse election of species requirements with care. 4. I recommend that you do not cancel claims that the Examiner has withdrawn from consideration, at least not until the RR is made final. 5. You must request reconsideration of the RR to qualify for petition. 6. A petition must be made (a) after the RR is repeated or made final and (b) before filing an appeal. 7. Most petitions for RR are granted in full or in part in ~ 90 days. (Nevertheless, less than 1% of RR’s are petitioned.) Petition Practice Points

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Restriction requirement response 3 strategies

  • 1. Three Strategies for Minimizing Cost and Delay in Restriction and Election Practice in the USPTO (using Scenarios 1 through 5)
  • 3. 1. Some PTO examiners will not exercise discretion in our favor. 2. Some PTO examiners perceive that they have the moral high ground. Assumptions
  • 4. 1. Some PTO examiners will not exercise discretion in our favor. 2. Some PTO examiners perceive that they have the moral high ground. 3. Some PTO examiners recognize that petition and appeal practice is unfamiliar to many practitioners and too costly for many clients. 4. It is not certain that a meritorious petition or appeal will get a proper response at the PTO. Assumptions
  • 5. 1. Some PTO examiners will not exercise discretion in our favor. 2. Some PTO examiners perceive that they have the moral high ground. 3. Some PTO examiners recognize that petition and appeal practice is unfamiliar to many practitioners and too costly for many clients. 4. It is not certain that a meritorious petition or appeal will get a proper response at the PTO. 5. If we have to file petitions and appeals, we want to be in the best possible position to do so. 6. We also want few claims to be withdrawn from consideration, if any, even while petitions and appeals are pending. Assumptions
  • 6. 41. (ORIGINAL) A medical system comprising: a first module configured to do some really important stuff; and a second module operably coupled to the first module and configured to do other stuff. 42. (ORIGINAL) The medical system of claim 41 in which the first module comprises: a first dispenser operably coupled with at least the first module. 43. (ORIGINAL) The medical system of claim 41 in which the first module comprises: more than one dose of a first therapeutic material within the second module. 44. (ORIGINAL) The medical system of claim 41 in which the first module comprises: a second dispenser. 45. (ORIGINAL) The medical system of claim 41 in which the first module comprises: a support element operable for supporting the second module. 46. (ORIGINAL) The medical system of claim 41, further comprising: the second module configured to do the other stuff over a period of more than a day.
  • 7. Applicant is required to elect one of the following patentably distinct species: Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module The species are independent or distinct because claims to the different species recite the mutually exclusive characteristics of such species . . . . [To be complete,] the reply to this requirement must include … (i) an election of a species to be examined even though the requirement may be traversed; and (ii) identification of the claims encompassing the elected species, including any claims subsequently added.
  • 8. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
  • 9. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
  • 10. Scenario #1 Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
  • 11. “Grudging Cooperation” Scenario #1 Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
  • 12. “Grudging Cooperation” I elect Species A, but WITH TRAVERSE !!! Scenario #1 Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
  • 13. “Grudging Cooperation” I elect Species A, but WITH TRAVERSE !!! Scenario #1 Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
  • 14. “Grudging Cooperation” I elect Species A, but WITH TRAVERSE !!! All claims are readable on Species A. Scenario #1 Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
  • 15. “Grudging Cooperation” I elect Species A, but WITH TRAVERSE !!! All claims are readable on Species A. Claims 43-46 are drawn to non-elected species Scenario #1
  • 16. “Grudging Cooperation” I elect Species A, but WITH TRAVERSE !!! All claims are readable on Species A. … and withdrawn from consideration. Claims 43-46 are drawn to non-elected species Scenario #1
  • 17. “Grudging Cooperation” I elect Species A, but WITH TRAVERSE !!! All claims are readable on Species A. … and withdrawn from consideration. Claims 43-46 are drawn to non-elected species Scenario #1
  • 18. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
  • 19. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module 4 Applicant respectfully calls the Examiner’s attention to this portion of the MPEP: Where two or more species are claimed, a requirement for restriction to a single species may be proper if the species are mutually exclusive. Claims to different species are mutually exclusive if one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second species and not the first. This may also be expressed by saying that to require restriction between claims limited to species, the claims must not overlap in scope. MPEP 806.04 (f) (emphasis added). The Examiner has indicated that species A through E of the present Restriction Requirement do not overlap, for example, but has not supported this view with any evidence or coherent explanation. Applicants accordingly request withdrawal of the present Restriction Requirement.
  • 20. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
  • 21. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
  • 22. Scenario #2 Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
  • 23. Scenario #2 “Overt Aggression” Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
  • 24. Scenario #2 It’s not possible for us to choose among these “Species.” “Overt Aggression” Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module How is that “mutually exclusive”?
  • 25. Scenario #2 It’s not possible for us to choose among these “Species.” “Overt Aggression” Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
  • 26. Scenario #2 It’s not possible for us to choose among these “Species.” “Overt Aggression”
  • 27. Scenario #2 Applicant’s “response” is unresponsive. It’s not possible for us to choose among these “Species.” “Overt Aggression”
  • 28. Scenario #2 Applicant’s “response” is unresponsive. It’s not possible for us to choose among these “Species.” “Overt Aggression” Comply or go abandoned.
  • 29. Scenario #2 Applicant’s “response” is unresponsive. It’s not possible for us to choose among these “Species.” “Overt Aggression” Comply or go abandoned.
  • 30. Strategy A: Picture Claims (narrow independent or dependent claims, often not commercially valuable, combining phrases of many dependent claims)
  • 31. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
  • 32. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module 46. (ORIGINAL) The medical system of claim 41, further comprising: the second module configured to do the other stuff over a period of more than a day. 47. (NEW) The medical system of claim 46 in which the first module comprises: a first dispenser operably coupled with at least the first module; more than one dose of a first therapeutic material within the second module; a second dispenser; and a support element operable for supporting the second module.
  • 33. Scenario #3 “Overt Aggression” Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
  • 34. Scenario #3 We elect all five “Species.” “Overt Aggression” Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
  • 35. Scenario #3 We elect all five “Species.” “Overt Aggression” Arg #1 . . . Arg #99 Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
  • 36. Scenario #3 We elect all five “Species.” “Overt Aggression” Arg #1 . . . Arg #99 Claim 47 proves that the “Species” may overlap. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module 46. (ORIGINAL) The medical system of claim 41, further comprising: a second module, operable to remain at least partly within an esophagus or intestine of the digestive or respiratory tract for more than a day. 47. (NEW) The medical system of claim 46 in which the first module comprises: a first dispenser operably coupled with at least the first module; more than one dose of a first therapeutic material within the second module; a second dispenser; and a support element operable for supporting the second module.
  • 37. Scenario #3 We elect all five “Species.” “Overt Aggression” Arg #1 . . . Arg #99 Claim 47 proves that the “Species” may overlap. Hmmm …
  • 38. Scenario #3 We elect all five “Species.” “Overt Aggression” Arg #1 . . . Arg #99 Claim 47 proves that the “Species” may overlap. Hmmm … For no additional time or trouble, I have an opportunity to teach this rich clown some respect.
  • 39. Scenario #3 Applicant’s “response” is unresponsive. We elect all five “Species.” “Overt Aggression” Arg #1 . . . Arg #99 Claim 47 proves that the “Species” may overlap.
  • 40. Scenario #3 Applicant’s “response” is unresponsive. We elect all five “Species.” “Overt Aggression” Comply or go abandoned. Arg #1 . . . Arg #99 Claim 47 proves that the “Species” may overlap.
  • 41. Scenario #3 Applicant’s “response” is unresponsive. We elect all five “Species.” “Overt Aggression” Comply or go abandoned. Arg #1 . . . Arg #99 Claim 47 proves that the “Species” may overlap.
  • 42. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
  • 43. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
  • 44. “Partial Aggression” Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
  • 45. Strategy B: Partial Aggression (giving the Examiner an opportunity to save face and appear to win something even while reinforcing the message that the Restriction Requirement wasn’t worth the trouble)
  • 46. Scenario #4 “Partial Aggression” Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
  • 47. Scenario #4 We provisionally elect “Species” A – C. “Partial Aggression” Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
  • 48. Scenario #4 We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
  • 49. Scenario #4 We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module 46. (ORIGINAL) The medical system of claim 41, further comprising: a second module, operable to remain at least partly within an esophagus or intestine of the digestive or respiratory tract for more than a day. 47. (NEW) The medical system of claim 46 in which the first module comprises: a first dispenser operably coupled with at least the first module; more than one dose of a first therapeutic material within the second module; a second dispenser; and a support element operable for supporting the second module.
  • 50. Scenario #4 We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Possible Response Hmmm … One Possible Response
  • 51. Scenario #4 We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Possible Response Hmmm … At least I can tell my SPE that we excluded two species. And we can’t win on petition… One Possible Response
  • 52. Scenario #4 We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Possible Response Hmmm … At least I can tell my SPE that we excluded two species. And we can’t win on petition… One Possible Response Accept the election and examine claims 41-44, and 46-47
  • 53. Scenario #4 We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Another Possible Response
  • 54. Scenario #4 Applicant’s “response” is unresponsive. We provisionally elect “Species” A – C. “Partial Aggression” Comply or go abandoned. If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Another Possible Response
  • 55. Scenario #4 Applicant’s “response” is unresponsive. We provisionally elect “Species” A – C. “Partial Aggression” Comply or go abandoned. If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Another Possible Response Telephone Interview
  • 56. Scenario #4 We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Another Possible Response But, at that telephone interview …
  • 57. Scenario #4 You tried to draft around my Restriction Requirement. We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Another Possible Response
  • 58. Scenario #4 You tried to draft around my Restriction Requirement. We provisionally elect “Species” A – C. “Partial Aggression” If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Another Possible Response To have claim 47 examined you must file an RCE.
  • 59. Scenario #4 You tried to draft around my Restriction Requirement. We provisionally elect “Species” A – C. “Partial Aggression” To have claim 47 examined you must file an RCE. If that’s too many, please call us to discuss and explain. This election is valid only if it will result in claim 47 being examined. Another Possible Response
  • 60. Strategy B: Partial Aggression (giving the Examiner an opportunity to save face and appear to win something even while reinforcing the message that the Restriction Requirement wasn’t worth the trouble)
  • 61. Strategy C: Proactivity (filing early picture claims to preempt any notion that the Examiner’s Restriction Requirement deserves respect)
  • 62. Scenario #5 not “NEW” 46. (ORIGINAL) The medical system of claim 41, further comprising: a second module, operable to remain at least partly within an esophagus or intestine of the digestive or respiratory tract for more than a day. 47. (PREVIOUSLY PRESENTED) The medical system of claim 46 in which the first module comprises: a first dispenser operably coupled with at least the first module; more than one dose of a first therapeutic material within the second module; a second dispenser; and a support element operable for supporting the second module.
  • 63. Scenario #5 You tried to draft around my Restriction Requirement. Hypothetical Response
  • 64. Scenario #5 You tried to draft around my Restriction Requirement. “Well Positioned” Hypothetical Response
  • 65. Scenario #5 You tried to draft around my Restriction Requirement. “Well Positioned” Golly, we mainly just wanted to get at least claim 47 examined. Hypothetical Response
  • 66. Scenario #5 “Well Positioned” Hmmm … Next time we see these picture claims, let’s not bother with a Restriction Requirement. Another Possible Response Hypothetical Response
  • 67. Strategy C: Proactivity (filing early picture claims to preempt any notion that the Examiner’s Restriction Requirement deserves respect)
  • 68. Proactivity (filing early picture claims to preempt any notion that the Examiner’s Restriction Requirement deserves respect) Partial Aggression (giving the Examiner an opportunity to save face and appear to win something even while reinforcing the message that the Restriction Requirement wasn’t worth the trouble) Picture Claims (narrow independent or dependent claims, often not commercially valuable, combining phrases of many dependent claims)
  • 71. 4 Applicant respectfully calls the Examiner’s attention to this portion of the MPEP: Where two or more species are claimed, a requirement for restriction to a single species may be proper if the species are mutually exclusive. Claims to different species are mutually exclusive if one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second species and not the first. This may also be expressed by saying that to require restriction between claims limited to species, the claims must not overlap in scope. MPEP 806.04 (f) (emphasis added). The Examiner has indicated that species A through E of the present Restriction Requirement do not overlap, for example, but has not supported this view with any evidence or coherent explanation. Applicants accordingly request withdrawal of the present Restriction Requirement. What’s a “species”?
  • 72. Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module 4 Applicant respectfully calls the Examiner’s attention to this portion of the MPEP: Where two or more species are claimed, a requirement for restriction to a single species may be proper if the species are mutually exclusive. Claims to different species are mutually exclusive if one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second species and not the first. This may also be expressed by saying that to require restriction between claims limited to species, the claims must not overlap in scope. MPEP 806.04 (f) (emphasis added). The Examiner has indicated that species A through E of the present Restriction Requirement do not overlap, for example, but has not supported this view with any evidence or coherent explanation. Applicants accordingly request withdrawal of the present Restriction Requirement. What’s a “species”?
  • 73. What’s a “species”? Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module
  • 74. What’s a “species”? Species A: having a first dispenser Species B: having more than one dose Species C: having a second dispenser Species D: having a support element Species E: having a second module a species
  • 75. When is a restriction requirement or species election proper? a species
  • 76. When is a restriction requirement or species election proper? When there truly is no overlap between claimed combinations
  • 77. Are these truly mutually exclusive? “treating a disease state” “… affecting a reptile” “… affecting a human” ???
  • 78. Are these truly mutually exclusive? “an identifier of a pathogen” “… wherein the pathogen is a bacterium”“… wherein the pathogen is a virus” ???
  • 79. Are these truly mutually exclusive? “implementing a therapeutic regimen” “… by a surgical procedure” “… without any surgery” ???
  • 81. 1. Decisions of an examiner that are of a discretionary, procedural, or non-substantive nature and that are not directly connected with the merits of issues involving rejections of claims are typically reviewable by petition under 37 C.F.R. § 1.181. 2. Response due dates remain in effect irrespective of a petition. 3. I recommend that you traverse election of species requirements with care. 4. I recommend that you do not cancel claims that the Examiner has withdrawn from consideration, at least not until the RR is made final. 5. You must request reconsideration of the RR to qualify for petition. 6. A petition must be made (a) after the RR is repeated or made final and (b) before filing an appeal. 7. Most petitions for RR are granted in full or in part in ~ 90 days. (Nevertheless, less than 1% of RR’s are petitioned.) Petition Practice Points
  • 82. 1. Decisions of an examiner that are of a discretionary, procedural, or non-substantive nature and that are not directly connected with the merits of issues involving rejections of claims are typically reviewable by petition under 37 C.F.R. § 1.181. 2. Response due dates remain in effect irrespective of a petition. 3. I recommend that you traverse election of species requirements with care. 4. I recommend that you do not cancel claims that the Examiner has withdrawn from consideration, at least not until the RR is made final. 5. You must request reconsideration of the RR to qualify for petition. 6. A petition must be made (a) after the RR is repeated or made final and (b) before filing an appeal. 7. Most petitions for RR are granted in full or in part in ~ 90 days. (Nevertheless, less than 1% of RR’s are petitioned.) Petition Practice Points
  • 83. 1. Decisions of an examiner that are of a discretionary, procedural, or non-substantive nature and that are not directly connected with the merits of issues involving rejections of claims are typically reviewable by petition under 37 C.F.R. § 1.181. 2. Response due dates remain in effect irrespective of a petition. 3. I recommend that you traverse election of species requirements with care. 4. I recommend that you do not cancel claims that the Examiner has withdrawn from consideration, at least not until the RR is made final. 5. You must request reconsideration of the RR to qualify for petition. 6. A petition must be made (a) after the RR is repeated or made final and (b) before filing an appeal. 7. Most petitions for RR are granted in full or in part in ~ 90 days. (Nevertheless, less than 1% of RR’s are petitioned.) Petition Practice Points
  • 84. 1. Decisions of an examiner that are of a discretionary, procedural, or non-substantive nature and that are not directly connected with the merits of issues involving rejections of claims are typically reviewable by petition under 37 C.F.R. § 1.181. 2. Response due dates remain in effect irrespective of a petition. 3. I recommend that you traverse election of species requirements with care. 4. I recommend that you do not cancel claims that the Examiner has withdrawn from consideration, at least not until the RR is made final. 5. You must request reconsideration of the RR to qualify for petition. 6. A petition must be made (a) after the RR is repeated or made final and (b) before filing an appeal. 7. Most petitions for RR are granted in full or in part in ~ 90 days. (Nevertheless, less than 1% of RR’s are petitioned.) Petition Practice Points

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