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Restriction Requirement - No Serious Burden on Examiner


Restriction is a practice of requiring an applicant to elect a single claimed invention (e.g., a combination or subcombination invention, a product or process invention, or a species within a genus) for examination when two or more independent inventions and/or two or more distinct inventions are claimed in an application (see MPEP § 802.02). A restriction requirement may be proper when the Examiner is faced with a "serious burden" to search and examine all of the claims in an application. However, there are instances when the Examiner fails to establish that a serious burden exists. In such cases, it may be beneficial to contest the appropriateness of the restriction requirement based on the failure to establish a serious burden.

Example Argument

MPEP § 803 states that “[i]f the search and examination of all the claims in an application can be made without serious burden, the examiner must examine them on the merits, even though they include claims to independent or distinct inventions” (emphasis added). MPEP § 808.02 adds:

[T]he examiner, in order to establish reasons for insisting upon restriction, must explain why there would be a serious burden on the examiner if restriction is not required. Thus the examiner must show by appropriate explanation one of the following:

(A) Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.

(B) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.

(C) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries[)], a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.

In this case, no appropriate explanation was given in the Office Action with respect to any of the above-mentioned sections. More particularly, when reading page [NUMBER] of the Office Action, no such explanation exists of: (1) separate classification thereof; (2) separate status in the art when they are classifiable together; or (3) a different field of search, as required by the MPEP. The Office Action merely stated that “… [the] Examiner determined that claims [INSERT CLAIM NUMBERS] are not associated with elected Species 1.” Therefore, the Office Action failed to explain reasons why there would allegedly be a serious burden on the Examiner if the restriction is not required.

Accordingly, it is respectfully submitted that the Election/Restriction requirement set forth in the Office Action is improper and respectfully requested that the Election/Restriction requirement be withdrawn.