We have previously discussed many aspect of restriction practice at the USPTO on this blog (here, here, here, here, here, here, here, here, here, here, here, and here) - noting the many problems with the current system and approach taken by the Office. We have also previously used FOIA requests to identify files with petitions since there is no easy way to search the USPTO database, and based on a new request just filed have now received a new batch of cases to review.
Once case to note is a patent application filed by NVIDIA (SN 13/754,799) related to a method for manufacturing printed circuit boards with laser drilling. The claimed process involves re-forming holes via a mechanical process, electroplating the holes with conductive material, and filling the plated holes with a non-conductive material. In the claims at issue, each hole has a diameter less than 100 micrometers and the conductive material does not completely fill the holes during electroplating.
The only way to explain what is happening in this case is that the USPTO is purposely twisting the facts to make the Applicant's life difficult. As one example, the USPTO issued a restriction not only between the process and product, but further restricted various dependent claims within the method as allegedly being related processes. As part of the restriction, the Office asserted that:
Note that there are 3 elements to the test, each of which must be met. NVIDIA then petitioned the restriction noting that there was an overlap in scope among the dependent claims. The Office of Petitions granted the petition to withdraw the restriction, which seemed like a win. However, it was a loss in disguise as the Office made the decision "in consultation with the Examiner" on the basis of an alleged admission that relates to element (3) (whereas NVIDIA argued element (2)).
From NVIDIA's petition it is clear that the focus was on element (2):
However, NVIDIA's petition did include some language that, while not actually an admission, was worded in a way that gave the Office an opening to allege that NVIDIA asserted element (3) was at issue. The Office of Petitions thus decided as follows:
The Office's disingenuous assertions regarding the petitioner's "statement" are not completely true. NVIDIA's attorneys likely well knew the danger of arguing element (3) and thus specifically focused their arguments on the overlap in scope. However, there was some additional language in the petition trying to explain the problems with the Examiner's approach that, if read out of context, might be an admission regarding element (3). The reason this matters is because of course the Examiner then used the Petition decision assertions to reject the dependent claims based on the alleged "admission" that they were obvious variants.
The case is now on appeal, and NVIDA points out this issue in its brief as follows:
While NVIDIA may eventually be successful on appeal, it is extremely important when petitioning improper restrictions not to have any loose language that gives the Office an opening to find an admission. Sunlight is the best disinfectant, so perhaps if more focus is placed on how the Office takes advantage of its administrative insulation from review there can be some reforms to level the playing field.