A recent article co-written by former PTO Director Jon Dudas along with Stepen Maebius and Sean Tu makes a strong statement regarding the rise in restriction requirements:
Restriction practice has clearly grown in the past few years. In 1993, there were only approximately 1,000 restriction requirements in the biotech practice group (out of approximately 32,000 first office actions). However, in 2008, the number of restrictions ballooned to 21,911 restriction requirements in the biotech practice group (out of approximately 42,000 first office actions). Thus, there has been a growth from only 1.5% of patents receiving restriction requirements to over 50% of patents receiving restriction requirements in the biotech practice group.
Squeezing More Patent Protection from a Smaller Budget Without Compromising Quality (2009).
Thanks for the post! I wonder what search engine you use to find the desired film? I use rapidshare SE ( http://rapidqueen.com ), and you?
Goodness, Mooney, do you really think that anyone here is fooled by your many sockpuppets?
Your stench as a baboon gives you away.
Mooney, leave Martin Goatse alone.
The only thing pathetic is the smell of a baboon.
Someday, Fair Play (aka MM)
Martin, please give it up. You’re pathetic.
Thanks 6.
A good listen for any patent attorneys about the state of the law at the moment:
link to websrvr82il.audiovideoweb.com
I could never be you moonie. It takes years of obfuscation to be you.And anyway moonie I only have the Dells in my corner. you seem to have all the other corners covered
Momma always told me that classy is as classy does.
She always has a way of saying things so that I could understand when to watch out for duplicitous baboons.
Black Pearl my special little girl. Let me put you up where you belong. whoa whoa whoa…
Black girl my special little.. Or is it ho ho ho and a bottle of,,, OH NO I’m having a moonieism. Jump back! Say it loud! Just obfuscate. I love that word.
Nice response, NWPA. It’s the baboon+Godwin+sockpuppet trifecta. Way to stay classy.
>>purveyor of the oh-so-professional baboon >>comments.
You may also want to differentiate commments on blog vs. 6 telling us how he behaves in his profession. I am always profession when I am acting in my capacity as an attorney.
The baboon comments capture a person’s attitudes, MM’s, that there is no need to argue fairly. Someday, Fair Play (aka MM), you may realize that you are no longer a human being by having dehumanized your opponnents in debate.
You are a short step from being a NAZI.
“Try to be professional.”
This coming from NWPA, purveyor of the oh-so-professional baboon comments.
Your voice is very refreshing David Boundy. Your experiences with PTO sound about like mine.
6: Try to be professional. You are an instrument of the law.
“Good luck finding a person in the Patent Office who gives a rat’s ass about the Administrative Procedure Act, procedural law or the text of a rule”
If I can find one what will you give me?
IANANE, it’s easy – often a procedural issue and a substantive issue are intertwined with each other — identical facts can give rise to two different issues reviewable in two different fora. E.g., Federal Communications Commission v. Nextwave Personal Communications, 537 U.S. 293 (2003) Bilski’s error was appealing only the substantive issue, and omitting the procedural issue.
No, examiner breaches of MPEP procedure are not appealable. The Board has so held on any number of occasions. The Board polevaults over all procedural breaches, refuses to review procedure, and will only review substantive law.
Under 37 CFR 1.181(a)(1), if an action is not appealable, it is necessarily petitionable.
Good luck finding a person in the Patent Office who gives a rat’s ass about the Administrative Procedure Act, procedural law or the text of a rule.
Isn’t violation of guidelines indicative of lack of examination quality?
If the Office says that such violations are not appealable, how are such violations policed? Are they indeed appealable because of the ABA?
Welcome aboard the Black Pearl!
Piracy is serious business, granted, but I still don’t understand why some people think MPEP 2106 is more important than 35 USC 101.
The MPEP doesn’t get the final say on whether Bilski’s claim is statutory subject matter. The MPEP even says so in 2106. If (assuming) the examiner gets the law right, who cares what he did with the guidelines?
Dear go d Boundy I don’t know how I missed that my first time through. That’s frakkin hilarious!
Welcome aboard the Black Pearl!
Malcolm writes:
> Boundy: For example, the whole Bilski fiasco started when a panel of
> rogue elephants on the Board illegally ignored the MPEP’s § 101 guidelines
> (MPEP § 2106) and went off on its own tangent.
> LOL. Bitter much?
Yes. Less about Bilski specifically than about the general contempt for the rule of law, especially procedural law, that pervades the Patent Office. I see it in day-to-day interactions with examiners, in my petitions practice, in my interactions with the Offices of General Counsel and Patent Legal Administration. Then to see it so directly expressed in a decision of the Board… See footnote 8 of Bilski…
link to uspto.gov
Pirates indeed.
“Under his reign 2000-2008, he enforced moving date cases (i.e., unexamined applications) by setting a date for each quarter in which all apps filed prior to or on that date had to be moved.”
Quarterly date goals were in place long before Dudas’s reign.
CJ, see page 1. We agreed to never mention the name of the dark lord again.
Anyone not see an issue with this and Executive Order 12866?
How ironic that Dudas wrote a paper on this since he is one of the culprits producing this result? Under his reign 2000-2008, he enforced moving date cases (i.e., unexamined applications) by setting a date for each quarter in which all apps filed prior to or on that date had to be moved. For most examiners, the number of date cases that needed to be moved was much greater than what they could do or would have needed to meet their production requirement. So in the former case, the examiner can only meet this requirement by sending out a written restriction (to get it off the docket and the list). Phoning in is no good since the application would still have to be examined for it to get off the list.
“and why is this an undue burden?”
We both know there’s no convincing you there’s no undue burden since the burden isn’t taken up by you. Just like you can’t convince me it’s not bull to cut the quality of your work as an attorney/agent by spending the time necessary because the client refuses to pay whatever it is you want in billable hours to draft something that meets what I would think is minimal standard for a quality spec and set of claims.
“Ha ha. It seems I was foolish in my days as an examiner for performing in such ways, since it is only now required.”
Sarcasm noted. However, you’re saying it’s coincidence that office actions have gotten longer and longer? We’re expected to search in more and more databases before allowing to justify some “quality metric”? Also, I’m sure I’m also not the only examiner who more and more are dealing with attorneys who are seemingly expecting me to draft the claims for them?
someguy: Add to that the fact that examiners are expected to do more and more now to meet the requirements of law and provide whatever level of customer service whoever is in charge of feel like that day.
——————
Ha ha. It seems I was foolish in my days as an examiner for performing in such ways, since it is only now required.
and why is this an undue burden?
thats kinda like saying any work over 7 hours is undue, or any work that prevents an easy count is undue.
the tail is wagging the dog.
Sorry, I meant to say that it’s absurd to say that there’s no *undue* burden.
Add to that the fact that examiners are expected to do more and more now to meet the requirements of law and provide whatever level of customer service whoever is in charge of feel like that day.
“All of the “inventions” were in the same class and subclass. Exactly how is searching one class/subclass an undue burden on an Examiner.”
It’s absurd for anyone to say nowadays that just because the inventions are in the same class/subclass that there is no burden. Some of these subclasses contain over a thousand references and the only way that you can go through them in a reasonable amount of time given that you have to search in other areas and databases also is to further limit the subclasses with one or two key words. If the argument that there is no burden because the inventions are in the same class/subclass is to have any real validity, the PTO needs to update and maintain the classification system so that each subclass has at most a few hundred references.
The numbers cited in this article to indicate an enormous rise in restriction requirements within the biotech group since the early 90’s are misleading. While restrictions have risen since that time what has really changed is the percentage of biotech restriction requirements which are written compared to those which are done telephonically and thus included within the FAOM. I have been a biotech examiner for almost 20yrs. In the early 90’s I would estimate that approximately 75% of all cases within my art unit required a restriction requirement but virtually all of these were done telephonically. Thus the only first actions which were only restriction requirements were those in which the attorney would not elect over the phone. Today I would estimate that somewhere close to 90% of all cases in my art unit receive an initial restriction requirement but almost all of these are now done as written requirements prior to the FAOM. There two main reasons for the change from telephonic to written restrictions. They are a large increase in complexity of the requirements (in the early 90’s most requirements included only 2-4 groups and restrictions with more than 10 groups were very rare while today the average requirement probably has more than 10 groups and cases with even more than 100 groups are not uncommon) and the PTO’s policy of granting 1 hr of other time for written restrictions but not for restrictions included within an FAOM. This policy essentially penalizes an examiner for doing a telephonic restriction even though this would reduce overall pendency of many cases.
@ Mooney 5:20
Well played, sir.
court challenges cost too much and the PTO knows it
Sort of a fact of life for everybody, not just the PTO.
Maybe the ACLU should get involved.
MVS, court challenges cost too much and the PTO knows it; it’s why they can get away with all of these examination ‘tricks’ that the Examiners here talk about.
6,
Wow. In your post @ 4:54 you actually appear to explain the way the proposed claims should be handled (at least at 1st glance – didn’t go through it in detail; too busy with other stuff). Generally, most of what you post is g@rb@ge, but this is better. Maybe you are learning a bit 🙂
Boundy, JD, et al., as to the “and” or “or” interpretation, if the PTO is so clearly wrong in its interpretation of the “and” being interpreted as (and intended to be) an “or”, why has no one successfully challenged it in court? IIRC, Gil Hyatt did make this challenge a few years back (maybe a decade now?) and lost it. Anyone else ever try?
MVS
No amount of legal sophistry in an informal agency staff manual can turn “and” in statute and 37 CFR to “or.” This isn’t a close case, it’s an easy court challenge (so long as the error was not harmless).
Maybe the statute is referring to (I)ndependent and (D)istinct, which is totally different. This is a very nuanced argument, mind you, my dear sir, but I commend you for your civilized efforts to maintain the discourse at a level at which we (by which I mean you and I (or is it you and me? — another interesting question (or is it?))) can both serve humanity, just as a farmer serves his charges by getting up before the early worm takes the cake.
/NAL off
For example, the whole Bilski fiasco started when a panel of rogue elephants on the Board illegally ignored the MPEP’s § 101 guidelines (MPEP § 2106) and went off on its own tangent.
So what? In the end, do you think the Supreme Court will pronounce on the proper application of MPEP 2106, or of 35 USC 101?
Insisting that agencies be bound by their own internal guidelines won’t avail you when the guidelines stand in contradiction to the actual law. The law will eventually win, once you appeal high enough that the judges don’t care about the agency’s silly guidelines because interpreting the law is their job.
Boundy: For example, the whole Bilski fiasco started when a panel of rogue elephants on the Board illegally ignored the MPEP’s § 101 guidelines (MPEP § 2106) and went off on its own tangent.
LOL. Bitter much?
The “fiasco” is the crxp that the PTO was rubber-stamping before someone finally woke up and tried to do something about it.
No amount of legal sophistry in an informal agency staff manual can turn “and” in statute and 37 CFR to “or.” This isn’t a close case, it’s an easy court challenge (so long as the error was not harmless).
If by a small entity, the PTO will have to pay the challenger’s legal fees under Equal Access to Justice Act, likely at full market rate without the EAJA cap.
“”The MPEP on restrictions is not only prolix ‘gobbledygook’, it is not even statutory! As as noted above, MPEP 808 says ‘Where the inventions as claimed are shown to be independent OR distinct’ but the statute it must be based on, 35 USC 121, says ‘independent AND distinct!'” ”
If you bother to read that “independent and distinct” phrase in context then you will have an epiphany.
“Species election, not restriction”
Let’s be clear, all restrictions are under the statute and they’re all restrictions. This “species election”, re what the office is doing, nonsense is just that, nonsense. The office makes restrictions and applicants make elections. I personally never do a “species election”, I make species restrictions.
“A species election between FIG. 1 (a robot), FIG. 2 (a first drive mechanism), FIG. 3 (a second alternative drive mechanism), FIG. 4 (a clutch usable in conjunction with either drive mechanism), and FIG. 5 (a flowchart showing a method of controlling the robot) should not be proper, but I don’t see authority to say so.”
That isn’t a species situation. You can talk to the spe about it or send in a petition. Simply say it isn’t a situation where a species restriction is proper. If they want to restrict in those situations they have to use the proper grouping.
“claim 1 is to a robot having a drive mechanism, claim 2 limits the drive mechanism to that in FIG. 2,”
That is a combo/subcombo situation unless all the specifics of the drive mechanism which are in claim 2 are also in claim 1.
“claim 1 is to a robot having a drive mechanism, claim 2 limits the drive mechanism to that in FIG. 2, claim 3 limits the drive mechanism to that in FIG. 3, and claim 4 adds the further limitation of the clutch. ”
Ok, looking at that situation as a whole here is the proper restriction. The reason the examiner probably fed it up is because it is complicated.
Assuming claims 1, 2 and 3 are all independent and claim 4 is dependent from claim 3 you have two options to make a valid restriction:
First you do a combo/subcombo for claim 1 in reference to the group of claims 2 and 3 (can probably lump 2 and 3 together in a group).
Then you write that if applicant elects the group with claims 2 and 3 in it then it is a species restriction comprising 2 species.
Claim 4 rides shotgun with claim 3 and goes wherever it goes, unless it is also a combo/subcombo between claims 3 and 4 in which case you can do another combo/subcombo.
Second you could do the species restriction first and say that claim 1 is generic. Then state that whether the applicant chooses species 1 or 2 then there will be a combo/subcombo between group 1 which will comprise claim 1 and group 2 which will comprise claim 2 or between group 1 which will comprise claim 1 and group 2 which will comprise claim 3 (and probably 4 since it depends from 3).
All of that assumes burden through diff classification etc.
Also, if you’d learn to claim better you wouldn’t have this nonsense going on. Likewise, if you ever have a valid combo/subcombo situation on your hands you know that you should have filed 2x applications from the get go. A robot with a part inside it isn’t even close to the same invention as that part inside it with all a bunch of specifics as to how that part is made up being included in the description of the part where it was left out in the recitation of the robot. If you stop trying to game the system then you’ll stop getting sht thrown back in your face.
“The MPEP on restrictions is not only prolix ‘gobbledygook’, it is not even statutory! As as noted above, MPEP 808 says ‘Where the inventions as claimed are shown to be independent OR distinct’ but the statute it must be based on, 35 USC 121, says ‘independent AND distinct!'”
Your homework assignment for tonight is to read MPEP 802.01.
Ewww – malcomy fingerprints all over ideas for Oliver Sacks.
But the request was explicitly for a non-BUI response.
The MPEP on restrictions is not only prolix “gobbledygook”, it is not even statutory! As as noted above, MPEP 808 says “Where the inventions as claimed are shown to be independent OR distinct” but the statute it must be based on, 35 USC 121, says “independent AND distinct!
Posted by: IANAE | Mar 03, 2010 at 01:56 PM
> It is binding on examiners.
> It may be binding on them per their terms of employment or internal
> quality review procedures (is it?), but it’s not binding on
> the PTO as an administrative body, nor on the
> courts with the power to review the decisions made by the PTO.
Effect on the PTO: The MPEP is a “housekeeping” regulation for agency employees under 5 U.S.C. § 301. It is binding on the agency’s employees in two senses. First, the public is entitled to rely on the MPEP vis-a-vis the PTO. In re Kaghan, 387 F.2d 398, 401, 156 USPQ 130, 132 (CCPA 1967). Second, if the PTO acts contrary to the MPEP, then that action is “illegal and of no effect.” Vitarelli v. Seaton, 359 U.S. 535, 546 (1959); Service v. Dulles, 354 U.S. 363, 388 (1957). It’s not binding on the agency in the sense that the agency can change its regulations for its own employees very readily.
Effect on the Board: “An interpretative rule binds an agency’s employees, including its ALJs.” Yale-New Haven Hospital v. Leavitt, 470 F.3d 71, 80 (2nd Cir. 2006). For example, the whole Bilski fiasco started when a panel of rogue elephants on the Board illegally ignored the MPEP’s § 101 guidelines (MPEP § 2106) and went off on its own tangent. If Board members disagreed with their boss, they should have worked through the process to have the MPEP revised, not gone vigilante.
Effect on the public: The President’s Final Bulletin on Agency Good Guidance Practices and 5 U.S.C. § 552(a) instruct that an agency staff manual cannot bind the public or “adversely affect any member of the public,” except to the degree it is a valid interpretative rule, validly promulgated with the requirements of the Paperwork Reduction Act, Executive Order 12866 (as amended), and Good Guidance. That is a really narrow set of exceptions, that the PTO hasn’t even attempted to comply with. The Office of General Counsel and Office of Patent Legal Administration apparently are populated with a very high percentage of scofflaws.
Effect on courts: On substantive issues, the PTO has no substantive rule making authority, so MPEP has no effect on courts (except the handful of narrow issues where statute grants narrow rule making authority). On procedural issues against the PTO (e.g., the sets of findings that have to be set forth in writing in Office Actions, in Chapter 2100), the MPEP is binding against agency employees in the two senses I discussed above. On procedural issues against applicants (e.g., restrictions), the MPEP has only the advisory effect of an “interpretative” rule — that is, if you comply, the PTO has to grant your request, and if you advance an alternative interpretation of a rule or requirement, the PTO cannot disallow you from advancing that alternative.
I’ll let 6’s remark to me stand or fall on its own.
“Amen. I’ve now found common ground with Mooney”
Znutar,
I too am afraid (and holding my nose) that I must agree whole heartedly with MM that Chapter 800 of the MPEP is “gobbledygook” or as I call it, “written in a language other than English.” You can find in Chapter 800 something to support any examiner position on restrictions/elections, including mutually inconsistent positions.
“The PTO’s interpretation of the terms ‘independent’ and ‘distinct’ created a contradiction in the statute that required them to interpret the term “and” in the statute?”
Your homework assignment for tonight is to read MPEP 802.01.
“…you’re presumably attempting to counter the point that burden is not necessary.”
You’re the only one who made that point. And you were wrong.
“It sounds like he did, actually.”
I’m sure he had as much of a clue as you have.
LOL
“What if the Markush group includes a computer, a tennis ball, and cyclohexane? Restriction still not proper?”
Not proper. Read Mr. Wegner’s comments on the proposed Markush rules. You might learn something. Something you could pass on to your students instead of the misinformation you’re spewing here.
There was an explanation of the PTO’s interpretation in the MPEP.
The PTO’s interpretation of the terms “independent” and “distinct” created a contradiction in the statute that required them to interpret the term “and” in the statute?
Anyone here still want to insist that the MPEP is legally binding in any meaningful way?
Do you think he even had a clue as to what “restriction” and/or “Markush” meant?
It sounds like he did, actually. A Markush claim is nothing but a fancy way of shoehorning several independent claims into a single independent claim when you can’t think of a general term for the members of the Markush group. What if the Markush group includes a computer, a tennis ball, and cyclohexane? Restriction still not proper?
Dudas is a sympton of a much larger problem we have. MM is another one.
Who is “we”, Martin? You and your nurse?
Federal Circuit, 1978, eh? Excellent vintage.
Even so, the part you quoted from that case says nothing about requiring burden. I agree that burden is not sufficient, but you’re presumably attempting to counter the point that burden is not necessary.
If the “statutory rights are paramount”, then the PTO’s right to restrict based on the mere presence of two claimed inventions must be paramount.
“After all, isn’t he the one who oversaw the change to MPEP §803.02, to the effect that Examiners can restrict between alternatives in a Markush group?”
Do you think he even had a clue as to what “restriction” and/or “Markush” meant? The lifers over there made that change, and as he didn’t know his elbow from a hole in the ground, he was none the wiser.
“How do you get around the independent AND distinct to which the USPTO only interprets it to mean independent or distinct?”
Because independent means the inventions are unrelated. Distinct means they are related (e.g. method and apparatus, subcombination/combination) but patentable over one another.
So no two inventions can be independent (unrelated) AND distinct (related), so the PTO interprets “and” in section 121 as “or.” Otherwise, restriction would be impossible.
There was an explanation of the PTO’s interpretation in the MPEP. Not sure if it’s still in the current edition.
I have had some success in having restrictions withdrawn either by directly presenting arguments in a response or through petition. Call your tech center’s quality assurance specialist for advise when a restriction appears to have been improperly made.
Examiners must show both distinctness and burden to justify a restriction requirement. Burden alone is not sufficient.
[…] Even though the statute allows the applicant to claim his invention as he sees fit, it is recognized that the PTO must have some means for controlling such administrative matters as examiner caseloads and the amount of searching done per filing fee. But, in drawing priorities between the Commissioner as administrator and the applicant as beneficiary of his statutory rights, we conclude that the statutory rights are paramount.
In re Weber, 580 F.2d 455 (Fed. Cir. 1978)
Bizarre world isn’t it JustAQuickThought. I wonder if all Dudas cared about was money or getting ahead and was willing to burn down and follow whatever orders he was given. Now he is just continuing to try to exploit he position as a former PTO head.
Dudas is a sympton of a much larger problem we have. MM is another one.
After all, isn’t he the one who oversaw the change to MPEP §803.02, to the effect that Examiners can restrict between alternatives in a Markush group?
Other than claim fees, what’s the difference between a Markush group and:
“Claim 6 which is A+B
Claim 7 which is A+C
Claim 8 which is A+D
Claim 9 which is A+E”?
Why is the rise in restrictions, particularly in TC 1600, a surprise to anyone, muchless Dudas?
After all, isn’t he the one who oversaw the change to MPEP §803.02, to the effect that Examiners can restrict between alternatives in a Markush group?
How do you get around the independent AND distinct to which the USPTO only interprets it to mean independent or distinct?
I don’t understand the question to which you are asking it of me to mean.
“By the way, I answered your stoopit question about IANAE’s comment.”
Thanks.
“Did you have a reason for asking it?”
Do you mean other than to demonstrate that IANAE is an i6noramus? Not particularly.
IANAE
How do you get around the independent AND distinct to which the USPTO only interprets it to mean independent or distinct?
Former Examiner
You are right on the money. It amazes me when an Examiner issues a restriction requirement that doesn’t classify the different claims as you indicate above.
It amazes me even more when the Examiner classifies all claims with the same classification and then still issues a restriction requirement failing to articulate any burden
“Species election, not restriction, but I’ll assume that was a slip.”
MPEP 802.02: Restriction is the practice of requiring an applicant to elect a single claimed invention (e.g., a combination or subcombination invention, a product or process invention, 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.
BM Mr. Boundy might have a different answer.
That’s nice.
By the way, I answered your stoopit question about IANAE’s comment. Did you have a reason for asking it?
6 says “yes, usually you’d need to be able to ID a reasonable genus to which they all belong to make a restriction.”
Species election, not restriction, but I’ll assume that was a slip.
So where’s your support? Why do you need to be able to ID a reasonable genus to force a species election? Logic says you should, but logic is usually of no avail. I’m looking for case law, or MPEP section, that requires species elections to be limited to those species of a particular genus. A species election between FIG. 1 (a robot), FIG. 2 (a first drive mechanism), FIG. 3 (a second alternative drive mechanism), FIG. 4 (a clutch usable in conjunction with either drive mechanism), and FIG. 5 (a flowchart showing a method of controlling the robot) should not be proper, but I don’t see authority to say so.
In the hypothetical, claim 1 is to a robot having a drive mechanism, claim 2 limits the drive mechanism to that in FIG. 2, claim 3 limits the drive mechanism to that in FIG. 3, and claim 4 adds the further limitation of the clutch. If I elect the species of FIG. 1 I next have to identify the claims that read on FIG. 1. I say they all do, but I’ve had examiners say none do. If I elect the species of FIG. 2 I obviously get claim 2 and not claim 3. What about claims 1 and 4?
“…but it’s not binding on the PTO as an administrative body”
Mr. Boundy might have a different answer.
It is binding on examiners.
It may be binding on them per their terms of employment or internal quality review procedures (is it?), but it’s not binding on the PTO as an administrative body, nor on the courts with the power to review the decisions made by the PTO.
“The sharp temper that let’s you know you are dealing with the real baboon.”
The real baboon comes out whenever you demonstrate that one of his sockpuppets is a prosecution i6gnoramus.
“…assuming you consider the MPEP to be a controlling authority (and I haven’t researched the case law).”
The MPEP is not binding on applicants and practitioners. It is binding on examiners. And baboons.
“Now let me pose a question that I’ve floated previously, but have never seen an answer to. Seems to me that if there is a species election requirement, it ought to be between species of some identifiable genus. I have never found good support for the argument that one cannot require a species election between things that don’t comprise an identifiable genus. Am I reading too much into the word “species?” Does the PTO attach a special meaning to it? ”
Znutar, there is always a genus. Everything in the universe belongs to the genus “something in the universe”. However, to be more reasonable, yes, usually you’d need to be able to ID a reasonable genus to which they all belong to make a restriction.
Boundy, you’re a tard, as usual.
NAL …in other words – the actual statistics for the increase in restrictions are quite possibly very understated.
Note the phrase “any given time period” in McKenzie’s comment.
I used to get more telephonic restrictions than I do now.
A fascinating rebuttal from Noise.
Malcolm began the post with an implicit denial of illegality concerned with the rise of restrictions and closes with a management must do something because of lack of capacity and increase demand, failing to see that that “something” was the suggested illegality that he denied. Implicit in his denial was that something else was the cause – that something else is merely a wishlist and thus, the prima facie case you suggest cannot be established – unless Malcolm establishes a prima facie case through denial and contradiction. As I said – back up is needed for the wishlist.
Actually, that’s not at all what you said. What you said was: “And that, of course, explains the rise in restriction requirements.” Please back up this conclusionary statement (in a non-bui manner). The statement you wanted Mr. Mooney to back up was completely separate from whatever it is that you’re discussing above. I believe this what you call a “red heron”? Or, perhaps, “obfuscation”?
WAKE UP.
Also interesting. For some reason, you feel it necessary to suggest that I am not fully alert. That may or not be true, but I don’t believe it supports any disagreement you have with Mr. Mooney. I believe this would be categorized as an ad hominem argument.
At 03:41 the great and wonderful Oz, er, um, Malcolm punches the buttons on his smoke machine and conclusorily replies to the statement of “the PTO counts mere restriction requrements as “first actions” for purposes of avoiding patent term extensions for PTO delays.” :
Nothing “mere” about many of these restriction requirements.
Hmmm… Here you are “arguing” about a completely separate posting that is unrelated to the statement of Malcolm’s that you were challenging, and unrelated to my comment. Another red heron?
Of course, in the best BUI, “many” may equal 3 out of the 21,911. Never mind the fact that the restriction rate was 3.1% (1000/32,000) in 1993, and moved to 52.2% (21,911/42,000) in 2008 (true capacity cannot be factored…
Sorry. There might be a valid argument buried in there, but I’m too tired to try to extract it. It might have helped if you had not worn me out with the red herons and ad hominem distractions.
And while Malcolm does provide some actual possibilities in his 04:59 PM post, (another victory for proper assailing), the laundry list has no real support in any factual study…
Very interesting! This appears to be a concession that Malcolm did actually back up his statement, with the caveat that you are actually responsible for this. Congratulations! But, if this is the case, wasn’t your complaint at 8:41 groundless? Perhaps it’s just as well that I didn’t try to decipher the substantive part of your post – the rest of the post is not suggesting a high degree of credibility…
IANAE Ever get a restriction in a design application?
No, but that’s because I don’t do design apps.
Establishing “burden” is a meaningless requirement. Using separate classification is one of the great games played in restriction practice.
MPEP 808.02 Establishing Burden provides:
Where the inventions as claimed are shown to be independent or distinct under the criteria of MPEP § 806.05(c) – § 806.06, the 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.
Simple hypothetical (don’t take the details below too literally):
Say you claim a car and a truck. The Examiner restricts and establishes burden by separate classification. The Examiner tells you that cars are in class XYZ and trucks are in class PDQ. Thus, it is shown that they have attained a separate status in the art and searching would be a burden.
So you look up the classes. Class XYZ is “four wheeled vehicles.” Class PDQ is “modes of transportation.” Basically there is much overlap in the classes and they are open to interpretation/fudging. So how did your truck end up in class XYZ and your car in class PDQ? Because that is where the Examiner put them when they were drafting their requirement for restriction. A classification specialist is not doing this. Had the Examiner put them both XYZ it would not have supported their statement of burden. The classification is arbitrary on the part of the Examiner and the reasoning is circular.
>>Go eff yourself, JD.
The sharp temper that let’s you know you are dealing with the real baboon.
…in other words – the actual statistics for the increase in restrictions are quite possibly very understated.
I think it is hard to get complete information as to the number of restrictions imposed by the PTO during any given time period. If a restriction is done by telephone and is included in a First Action on the Merits, then it does not show up as a resriction in the PTO statistics.
For the record, I’ve never received a RR without at least a prima facie showing of the burden.
Ever get a restriction in a design application?
“35 USC 132(a): Whenever, on examination,”
Whoa wait – what was that?
“on examination”
35 USC 132(a) constinues: “…and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined.”
Whoa wait – what was that?
“…shall be reexamined.”
So this means the first examination, even for requirements should be actual “examinations”, and should be complete, how else would the second be a reexamination (as opposed to a continued examination).
Still waiting for that dazzling plain language rendition wherein examination means partial or arbitrarily selective examination…
In other words, the PTO does not have to issue a FAOM within 14 months.
Gosh, that’s a real revelation, JD. What else is the PTO not required to do?
patentably distinct inventions may be restricted without the examiner showing burden.”
Do you agree with this state, Malcolm?
35 USC 121: “If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions.”
I don’t see anything about a burden in there.
But MPEP 803.I. says that a “a serious burden” if unrestricted is a criteria for restriction. In addition, “a serious burden on the examiner may be prima facie shown by appropriate explanation of separate classification, or separate status in the art, or a different field of search as defined in MPEP § 808.02.” Seems like a pretty low hurdle.
So the answer to the question appears to be “no”, assuming you consider the MPEP to be a controlling authority (and I haven’t researched the case law). Of course, many commenters here consider the MPEP to be pile of crxp so I’m absolutely certain they’ll vehemently disagree with my interpretation.
For the record, I’ve never received a RR without at least a prima facie showing of the burden.
“Once again, patentably distinct inventions may be restricted without the examiner showing burden.”
Do you agree with this state, Malcolm?
37 CFR § 1.703 Period of adjustment of patent term due to examination delay.
(a) The period of adjustment under § 1.702(a) is the sum of the following periods:
(1) The number of days, if any, in the period beginning on the day after the date that is fourteen months after the date on which the application was filed under 35 U.S.C. 111(a) or fulfilled the requirements of 35 U.S.C. 371 and ending on the date of mailing of either an action under 35 U.S.C. 132, or a notice of allowance under 35 U.S.C. 151, whichever occurs first.
35 USC 132(a): Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made
A restriction requirement is a requirement. There is nothing in Rule 703(a) or section 132 that prevents the PTO from considering a restriction requirement as being a requirement that meets the 14 month deadline for PTA. In other words, the PTO does not have to issue a FAOM within 14 months.
The operative word in section 121 is “may” require restriction, not must require restriction.
Nobody argued otherwise, JD.
I hope it’s just correspondence school you’re teaching.
Go eff yourself, JD.