818.01 Election in Reply to a Restriction Requirement: Express [R-07.2015]
37 C.F.R. 1.143 Reconsideration of requirement.
If the applicant disagrees with the requirement for restriction, he may request reconsideration and withdrawal or modification of the requirement, giving the reasons therefor. (See § 1.111 ). In requesting reconsideration the applicant must indicate a provisional election of one invention for prosecution, which invention shall be the one elected in the event the requirement becomes final. The requirement for restriction will be reconsidered on such a request. If the requirement is repeated and made final, the examiner will at the same time act on the claims to the invention elected.
Election in reply to a requirement for restriction may be made either with or without an accompanying traverse of the requirement. A complete reply to a restriction requirement must include an election even if applicant traverses the requirement.
A traverse is a request for reconsideration of a requirement to restrict that must include a written statement of the reasons for traverse, distinctly and specifically pointing out the supposed errors upon which the applicant relies for his or her conclusion that the requirement is in error. The absence of any statement indicating whether the requirement to restrict is traversed or the failure to provide reasons for traverse will be treated as an election without traverse.
Where a rejection or objection is included with a restriction requirement, applicant, besides making a proper election, must also distinctly and specifically point out the supposed errors in the examiner’s rejection or objection, or amend and argue that as amended the objection or rejection is moot. See 37 CFR 1.111.
Applicant must make his or her own election; the examiner will not make the election for the applicant. See 37 CFR 1.142 and 37 CFR 1.143.
818.01(a) Reply Must be Complete [R-07.2015]
As indicated in the first sentence of 37 CFR 1.143, the traverse to a requirement for restriction must be complete as required by 37 CFR 1.111(b). Under this rule, the applicant is required to specifically point out the reason(s) on which he or she bases his or her conclusion(s) that a requirement to restrict is in error. A mere broad allegation that the requirement is in error does not comply with the requirement of 37 CFR 1.111. Thus the required provisional election (see MPEP § 818.01(b)) becomes an election without traverse if accompanied by an incomplete traversal of the requirement for restriction.
818.01(b) Election is Required, Even When Requirement Is Traversed [R-07.2015]
As noted in the second sentence of 37 CFR 1.143, a provisional election must be made even if the requirement is traversed.
All requirements for restriction, other than those containing only an election of species, should include form paragraph 8.21. For election of species, form paragraph 8.01 or 8.02 should be used. These form paragraphs include the above notice.
818.01(c) Traverse is Required To Preserve Right of Petition [R-07.2015]
37 C.F.R. 1.144 Petition from requirement for restriction.
After a final requirement for restriction, the applicant, in addition to making any reply due on the remainder of the action, may petition the Director to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsideration of the requirement was not requested (see § 1.181 ).
To preserve the right to petition from the requirement for restriction, all errors to be relied upon in the petition must be distinctly and specifically pointed out in a timely filed traverse by the applicant. The petition may be deferred until after final action on or allowance of the claims to the elected invention. In any event, the petition must not be filed later than the filing date of the notice of appeal. If applicant does not distinctly and specifically point out supposed errors in the restriction requirement, the election should be treated as an election without traverse and be so indicated to the applicant by use of form paragraph 8.25.02.
¶ 8.25.02 Election Without Traverse Based on Incomplete Reply
Applicant’s election of [1] in the reply filed on [2] is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
818.01(d) Traverse of Restriction Requirement With Linking Claims [R-07.2015]
Regardless of the presence of a linking claim, a proper traverse must include a written statement of the reasons for traverse, distinctly and specifically pointing out the supposed errors upon which the applicant relies for his or her conclusion that the requirement is in error. If restriction is made final following consideration of a traverse, the right to petition is preserved even if all linking claims are canceled. When a final restriction requirement is contingent on the nonallowability of the linking claims, applicant may petition from the requirement under 37 CFR 1.144 without waiting for a final action on the merits of the linking claims or applicant may defer his or her petition until the linking claims have been finally rejected, but not later than the notice of appeal. See 37 CFR 1.144 and MPEP § 818.01(c).
An election combined with an argument that the linking claim is allowable is not a traversal of the restriction requirement. The Office considers such a response to be a concession that restriction is proper if the linking claim is not allowable. If the linking claim is allowable, the restriction is improper and should be withdrawn. If the Office allows the linking claim, the restriction requirement must be withdrawn and claims to all linked inventions that depend from or otherwise include all the limitations of the allowable linking claim must be acted upon.