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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 —

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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.

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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:

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

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