As we have discussed in previous posts, some examiners wield restrictions as an effective tool to limit applicant’s prosecution options and wear them down with repeated procedural delays.

To that end, applicants should be especially wary of election of species among figures during downstream prosecution. An applicant can lose an entire round of prosecution if the examiner can argue that an amendment is drawn from an un-elected figure. As pointed out in the MPEP, claim amendments made after an election arguably require the applicant to indicate how the claims are readable on the elected species or grouping of patentably indistinct species. MPEP 809.02(a).

But what happens when an amendment is supported by both an elected and un-elected figure?

The first point is this: the fact that the amendment is supported by both an elected and un-elected figure might be a clue (and evidence) that the restriction is improper in the first place (and hopefully the restriction was traversed).

Second, the applicant should be careful to point to support in the elected figure as the primary basis for the right to have the amendment entered. Pointing to support in the un-elected figure, even while also pointing to the elected figure, can lead some examiners intent on wearing down an applicant to allege the amendment is drawn to un-elected species and thus refuse entry. And if the election was made without traverse, the examiner may completely ignore any arguments as to why it is improper to look at the un-elected figure and refuse entry of the amendment.

So, it is prudent to pay close attention to every restriction not just when it is initially issued, but throughout prosecution.