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How do I read an Office Action?

Special Kinds of Office Actions

Restriction Requirement 

A restriction requirement indicates that the Examiner believes there are more than one invention in the application which are patentably distinct from each other. 

The Examiner will provide a list of "groups" which represent the different inventions, and will indicate why he thinks they are distinct from each other. These groups may be defined by listing groups of claims, or by referring to figures in the drawing (in which case you will have to identify the claims which represent each group). 

Since the rule is, "one invention to a patent", you will have to elect one invention to proceed with. The claims directed to that invention will be examined, and the claims directed to the other invention(s) will be withdrawn from consideration.

You can file "Divisional" applications to pick up the withdrawn claims at any time until the application issues. Filing a divisional basically entails re-filing the same application with just the claims you didn't elect in the original case. .

Election of Species

An election of species is similar to a restriction requirement, in that you will have to choose one claim or group of claims to be examined. The difference is that in an election of species, the Examiner believes that it is possible that the claims in the application would cover more than one variation ("species") of a single invention. If a "generic" claim (one which covers more than one species) is allowed as a result of the examination process, then other unelected species which would be covered by that generic claim would also be allowed. 

If there are no claims which are "generic", you'll need to file a "divisional" patent application covering the non-elected species, just as in the restriction requirement. 

While you can argue against the restriction requirement or election, you must still make an election in your response even if you think the requirement is completely inappropriate. 

You should realize that while Examiners will sometimes compromise on the number or arrangement of groups in a restriction or election of species, if provided with sufficiently convincing arguments, they will almost never back down and withdraw the election. It is possible to file a petition to have the requirement withdrawn, as well, but these are not often granted. 

"Final" Rejections

First, calm down. Just because the Examiner has made the rejections "final" does not mean that they are really final. The declaration of finality just restricts your options in how you can respond to the rejections.

You can respond to a final rejection in one or more of these ways: 

a) If some claims have been allowed, amend or cancel the remaining claims to obtain an allowance.

b) File a Request for Reconsideration with the Examiner explaining why the final rejection was based on faulty reasoning.

c) Request an interview with the Examiner as soon as possible to explain the issues, and perhaps to negotiate changes to the claims which would satisfy the Examiner. You can make that request in a telephone call to the Examiner, and most Examiners are happy to grant interviews. 

d) File an appeal to the Board of Patent Appeals.

e) File a Request for Continued Examination (RCE), continuation or continuation-in-part (CIP) application with an amendment to better focus the claims

If you do not choose any of these, the application will become abandoned. If you have not done so already, this is a very good time to consult with a patent professional (preferably one here at Brown and Michaels). 


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Don't forget our "Patent FAQ" page - it has lots of information about patents and the patent process. 


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