An Analysis of the New Rules: 37 C.F.R. § 1.142(c): Increasing the Chances of Submitting a Successful Suggested Restriction Requirement (SRR)

    By Christopher P. Singer --

On August 21, 2007, the U.S. Patent and Trademark Office published new rules concerning continuation and claims practice that will undoubtedly have a profound effect on the way patent attorneys and agents prosecute applications before the Patent Office.  In view of the 128-page Federal Register notice regarding the new rules, the Patent Office's nearly two hour webcast on August 23, 2007 (and the webcast's accompanying 113-page presentation), and the Office's 63-page list of Frequently Asked Questions, Patent Docs believes it may be helpful to examine the rules piece-by-piece in an attempt to identify areas where patent attorneys and agents will need to modify their patent prosecution practice.

37 C.F.R. § 1.142(c) Guidance:

We have previously discussed the requirements and implications of the new suggested restriction requirement (SRR) provision of new rule 1.142(c).  The particulars of this rule are relatively straightforward and an applicant should not have any trouble complying with the requirements of the rule.  Nevertheless, what can an applicant do to increase the persuasiveness of the SRR and the chances that it will be accepted by an Examiner?  The Patent Office's recently released Frequently Asked Questions (FAQs) provides some nice guidance regarding what content an applicant should consider submitting in the SRR.

First, you should make sure that your SRR complies with the rule and its various elements.  In order for the SRR to be timely and considered by the Office, the SRR must be submitted prior to receiving the earlier of either an Office action on the merits or a restriction requirement.  Another (rather obvious) requirement is that the application must have pending claims that are drawn to two or more independent and distinct inventions.  The SRR should clearly identify the claims which correspond to the various independent and distinct inventions.  The SRR also needs to contain an election of invention, which must be made without traverse, and identify the claims directed to the elected invention.  Further, the claims of the elected invention must comply with the 5/25 claim rule.

As far as the explanation concerning the patentably distinct nature of the various inventions, Applicants should detail why the inventions are independent or distinct as claimed and not merely make conclusory statements that "the claims are independent and distinct."  For guidance and tests for determining when inventions are independent or distinct, Applicants should refer to M.P.E.P. §§ 802.01, 806, 806.05-806.05(j), 806.06, and 808.01.  To strengthen the argument, an applicant can also explain why the Examiner would be burdened if the restriction is not required.  Arguments relating to the burden aspect can be based on M.P.E.P. §§ 803.02, 808, and 808.02.  The Office's FAQs provide a couple of examples relating to the burden, such as providing an appropriate explanation of separate classification of claimed subject matter, or highlighting that the subject matter has separate status in the art, or that the subject matter would require a different field of search as defined in M.P.E.P. § 808.02.  While the Patent Office suggests that this type of argument be included with the SRR, and could be adequate on its own to induce acceptance of an SRR, it is probably advisable to review the rationale employed by the Office in issuing prior restriction requirements, leaving "no stone unturned."

Divisional applications are likely to be very important in prosecution strategies under the new rules, and the SRR could very well be a key tool for applicants, allowing them to position entire application families in a way that they wish.  Thus, it makes sense to include in the SRR as complete and persuasive an argument as possible regarding the patentable distinctiveness of claims an applicant wishes to restrict.

For additional articles in this series, please see:

• "An Analysis of the New Rules: 37 C.F.R. § 1.145: "Provoking a Restriction Requirement," October 3, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1)(i) & (vi): PCT Practice," September 23, 2007
• "An Analysis of the New Rules: USPTO Releases ESD Guidelines," September 17, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.265: Examination Support Document," September 13, 2007
• "An Analysis of the New Rules: Revisions to First Action and Second Action Final Practice," September 11, 2007
• "An Analysis of the New Rules: 37 C.F.R. §§ 1.78(d)(1) and 1.114: Streamlined Examination," September 10, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.117: Refund Due to Cancellation of Claims," September 10, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.142: Suggested Restriction Requirements," September 6, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.114: RCE Practice," September 5, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.75(b): 5/25 Limit on Claims," September 4, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1): Claims for Benefit of Prior-Filed Applications," September 3, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(f): Commonly Owned Applications and Patents," August 27, 2007

For additional information on this and other related topics, please see:

• "Breaking A Very Long Silence," October 1, 2007
• "It Ain't Necessarily So," September 28, 2007
• "Commissioner Doll Addresses ACI Biotech Patents Conference," September 26, 2007
• "Rules Challenger Amends Complaint and Withdraws PI Motion," September 11, 2007
• "Inventor Sues PTO to Prevent New Continuation Rules from Taking Effect," August 30, 2007
• "Patent Office Provides Recorded Web-Based Discussion of New Rules," August 30, 2007
• "New PTO Continuation Rules: Unfair to Biotech?" August 29, 2007
• "Proposed Agenda for September 12, 2007 Biotechnology/ Chemical/Pharmaceutical Art Group Meeting," August 24, 2007
• "The 'Word' on the New Continuation Rules (from the USPTO Webcast) - Part II," August 24, 2007
• "The 'Word' on the New Continuation Rules (from the USPTO Webcast) - Part I," August 23, 2007
• "New Continuation and Claims Rules Published," August 22, 2007
• "More on M.P.E.P. § 710.06," August 20, 2007
• "Patent Office to Hold Webcast on New Claim and Continuation Rules on August 23, 2007," August 20, 2007
• "Patent Office Announces that New Continuation and Claims Rules Will Be Published . . . Tomorrow," August 20, 2007
• "Procuring Patent Protection from the Present USPTO," August 15, 2007
• "New Continuation and Claims Rules to Be Published in Late Summer," July 25, 2007
• "They Just Don't Get It - 'Patent Reform' at the USPTO," April 11, 2007
• "Patent Applicants Beware: The Rules Are Changing (Again)" Part 1 and Part 2, November 6, 2006