Why traverse a restriction requirement

And they will usually just correct their mistake on the restriction requirement, and send you another one. If the examiner has grouped the claims in an illogical way, it may be worthwhile to respond with traverse to suggest a more sensible grouping of the claims.

It also precludes the two groupings of claims, which are now separate patent applications due to your acceptance of the restriction requirement, from being obvious in light of the other, if one of the patent applications is ever the subject of litigation. Typically, when responding without traverse, you respond by electing the group of claims you want to have examined now, and state that you do so without traverse.

You can file a divisional patent application to have the other grouping or groupings of claims examined at any time until a patent on the elected claims issues. Do you have questions about an election requirement or a restriction requirement? Give me a call at or email me at my Contact Me page. Wondering why I chose this image from US patent 4,,? In the reply to the restriction requirement, applicant must elect one invention for examination.

If applicant wishes to traverse the restriction requirement, the reply must also include a traversal with specific reasons why applicant believes the restriction requirement is in error.

See 37 CFR 1. Applicant must make his or her own election; the examiner will not make the election for the applicant. Election becomes fixed when the claims in an application have received an action on their merits by the Office. If, after receiving an action on the merits of an invention, one or more properly divisible additional inventions are subsequently presented for examination, the examiner may deem the examined invention to be the invention elected by original presentation.

If the applicant disagrees with the requirement for restriction, he may request reconsideration and withdrawal or modification of the requirement, giving the reasons therefor. 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. Under 37 CFR 1. If two or more independent and distinct inventions are claimed in a single application, the examiner in an Office action will require the applicant in the reply to that action to elect an invention to which the claims will be restricted, this official action being called a requirement for restriction also known as a requirement for division.

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.