818.03 Express Election and Traverse [R-3]
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 may be made either with or without an accompanying traverse of the requirement.
Applicant must make his or her own election; the examiner will not make the election for the applicant. 37 CFR 1.142, 37 CFR 1.143.
818.03(a) Reply Must Be Complete
As shown by the first sentence of 37 CFR 1.143, the traverse to a requirement must be complete as required by 37 CFR 1.111(b) which reads in part: "In order to be entitled to reconsideration or further examination, the applicant or patent owner must reply to the Office action. The reply by the applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner’s action and must reply to every ground of objection and rejection in the prior Office action. . . . The applicant’s or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. . . ."
Under this rule, the applicant is required to specifically point out the reasons on which he or she bases his or her conclusions 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 § 818.03(b)) becomes an election without traverse.
818.03(b) Must Elect, Even When Requirement Is Traversed [R-3]
As noted in the second sentence of 37 CFR 1.143, a provisional election must be made even though the requirement is traversed.
All requirements for restriction should include form paragraph 8.22.
¶ 8.22 Requirement for Election and Means for Traversal
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement be traversed (37 CFR 1.143 ) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse.
Should applicant traverse on the ground that the inventions or species are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions or species to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C.103(a) of the other invention.
Examiner Note:
This form paragraph must be used in Office actions containing a restriction requirement with or without an action on the merits.
818.03(c) Must Traverse To Preserve Right of Petition [R-3]
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 ).
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 § 818.03(a)).
818.03(d) Traverse of Restriction Requirement With Linking Claims [R-3]
Election of a single invention in reply to a restriction requirement, combined with a traverse of only the nonallowance of the linking claims, is an agreement with the position taken by the Office that restriction is proper if the linking claim is not allowable and improper if it is allowable. If the Office allows such a claim, it is bound to withdraw the requirement and to act on all linked inventions which depend from or otherwise require all the limitations of the allowable linking claim. But once all linking claims are canceled 37 CFR 1.144 would not apply, since the record would be one of agreement as to the propriety of restriction.
Where, however, there is a traverse on the ground that there is some relationship (other than and in addition to the linking claim) that also prevents restriction, the merits of the requirement are contested and not admitted. If restriction is made final in spite of such traverse, the right to petition is preserved even though 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 appeal. See 37 CFR 1.144 and MPEP § 818.03(c).