Sometimes when an applicant files a patent application, they actually receive an office action with all of the claims examined. While one would expect this to be the norm, current restriction trends at the USPTO indicate that in some art units restrictions are made in more than 50% of all applications. While staggering, it is not unexpected as restriction practice is highly convoluted and deferential to the Examiner (and thus difficult to challenge). Certainly restriction is valid in many of the actions issued by the Office, yet every practitioner can tell stories about 10-way restrictions with election of species to boot resulting in only one or two claim being examined at a time.

One would think receiving a first office action on the merits without a restriction is a green light indicating the applicant will not be bogged down with restrictions. Unfortunately, this is not always so. From MPEP 811, 37 CFR 1.142(a), second sentence, indicates that a restriction requirement “will normally be made before any action upon the merits; however, it may be made at any time before final action.”  While the MPEP confirms that this means the examiner should make a proper requirement as early as possible in the prosecution, in the first action if possible, it is certainly possible to come later "as the need for a proper requirement develops."

Despite the rules requiring restrictions to come "before final action," the USPTO has interpreted this rule to allow brand new restrictions in a final rejection through the auspices of an "election by original presentation."  According to MPEP 821.03, claims added or amended after an action on the merits can be restricted out (and thus not examined) even if no restriction was ever made originally if the new claims are directed to an invention that is independent or distinct from the invention originally claimed. The Office routinely issues such restrictions in final rejection and explains the actions as follows:

Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims not directed to the elected invention are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03

Now, Rule 142(b) states that "claims to the invention or inventions not elected, if not canceled, are nevertheless withdrawn from further consideration by the examiner by the election, subject however to reinstatement in the event the requirement for restriction is withdrawn or overruled." Clearly this rule says nothing about claims elected by original presentation, and certainly does not provide an exception for providing restrictions at a time other than before a final action.

There is a large incentive for Examiners to improperly use the "election by original presentation" tool to aid in rejecting applications and wearing down applicants. In particular, any time an amendment is made that avoids the prior art but does not come directly from an already present dependent claim, the Examiner can simply refuse to consider the new claim element and issue a final rejection without even having to do any further searching or analysis by arguing that the invention has now shifted to something different. Applicant is then faced with a final rejection and most applicants are forced to file an RCE and try a different amendment. Perhaps someday there will be an Administrative Procedure Act challenge to the USPTO's practice, but until then practitioners should know how to fight back against restrictions coming in a final rejection for the first time.

US 14/733,672 illustrates one approach. The invention relates to a device for maintaining visualization with surgical scopes. The Examiner issued a non-final action without a restriction. In response, claim 1 was amended to specify a specific length of a deflector assembly that narrowed the scope of the claim to a more specific structure disclosed in the specification. The Examiner issued a final rejection asserting that claim 1 was now considered withdrawn as being directed to an invention that is independent or distinct from that originally claimed. Applicant first utilized the AFCP program to traverse the restriction and then timely petitioned the improper restriction. While applicant also filed an RCE to enable further amendments, the applicant was successful in the petition and will now receive a new non-final rejection of claim 1. 

Often restrictions based on an election by original presentation are improper and open to a reasoned challenge by petition. Either the Examiner has failed to give a proper basis for the restriction, failed to provide a search burden, or both. Thus, applicants should consider a strategic use of petitions and AFCP requests to maximize the ability to obtain desired claim scope.

There are many more nuances to these issues so look for more posts to come in the future on advanced restriction practices.