Restriction Petition Survey; A Few Helpful Hints. Julie Burke TC1600 Special Program Examiner 571-272-0512. TC 1600 Filings and Restrictions. TC1600 mails out about 28,000 first actions on the merits each year and about 12,000 restriction requirements
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TC1600 Special Program Examiner
Please file required response within the time period indicated in the last Office action.
Tip: Avoid dismissals by filing petitions AFTER the restriction requirement is
· repeated or
· made final.
Note: Divisionals, continuations and continuation-in-parts of PCTs or 371s are subject to US rules.
Tip for traversal: Point out instances in which the wrong rules are used.
Current Form Paragraphs should be used when formulating restriction requirements
Tip for Traversal: Point out instances when out-dated or altered form paragraphs are included in restriction requirements.
Note-This alone will not necessarily result in the petition being granted.
Tip for traversal: Point out any inventions missing from the groupings.
Where the claims of an application define the same essential characteristics of a single disclosed embodiment of an invention, restriction there between should never be required…. See 806.03
Tip for Traversal: Point out instances when the same disclosed embodiment can be placed in two separate groups.
Example: Group I: Tropical fruit.
Group II: Citrus fruit.
Yet specification discloses an “orange” which is encompassed by both groups.
An example of “species” which overlap in scope: rodent, mouse and transgenic mouse.
Inventions as claimed are independent if there is no disclosed relationship between the inventions, that is, they are unconnected in design, operation, and effect... 806.06
Tip for traversal: Identify pairs of “independent inventions” that are
Such pairs of inventions are related and should be considered for distinction under MPEP 806.05.
Tip for Traversal: If the examiner has not addressed burden, the restriction requirement is incomplete.
Check public PAIR to see if petition has been received
Questions? Call TC1600 SPRE Petition Leads
Bill Dixon 571-272-0519
Marianne Seidel 571-272-0584
If petition is decided outside the TC, contact
Office of Initial Patent Examination 571-272-4000
Office of Petitions 571-272-3282
Office of Publication- Image Assistance Center 571-272-4200