As previous posts have explained in detail, restriction requirements in the wrong hands (examiners bent on rejection and wearing down applicants) are a formidable opponent. Of course, if your prosecution strategy is able to take advantage of restrictions because you want to draw out prosecution and have numerous claim sets examined, restrictions can be a blessing. But many times, when funds are limited and there is a need to efficiently advance a case through examination, difficult restrictions can be more blocking than even the closest prior art. Only through perseverance, including strategic use of amendments and petitions, can the applicant have a chance at leveling the playing field.
This post illustrates a common approach from difficult examiners that use restrictions as a weapon to wear down and block applicants from promising approaches.
The approach generally follows something along these lines:
Issue a burdensome, and highly complex restriction requirement - this typically requires election among several groups (e.g., system/system/method), but also breaks down numerous elements and features into separate species. The result is that the applicant is usually restricted to a single independent claim and one figure, or one particular feature of a dependent claim, to the exclusion of other figures and features. In this way, an applicant may be effectively forced to select only one particular feature for examination, without having any idea of the prior art. While examiners are theoretically supposed to issue restrictions before performing a prior art search (as there must be a search burden after all), typically examiners following this approach have already done the search, or at least have some idea of the art they plan to apply. Thus, while the applicant is usually in the dark when electing, examiners can sometimes craft the restriction knowing what features are, and are not, well supported in the prior art available to them.
If the applicant elects without traverse, they have just given the examiner the best gift they could ever imagine. The examiner can now use, and stretch, the initial restriction in all kinds of ways, and when the applicant tries to later object, the applicant is already digging out of their own hole. Further, the applicant is now limited to a single feature for amendment, and unable to add features from other parts of the application, even if disclosed as being used in combination. If the applicant tries to add distinct features, the examiner can refuse entry of the amendments alleging that they do something more than exactly track the elected species. The examiner does this by issuing a notice of non-compliant amendment. That way, the applicant is stuck in a procedural purgatory. The applicant is then likely to struggle for several office actions attempting to add features, only to be blocked, and thus hamstrung in finding ways around the cited art. The examiner, meanwhile, has spent little time and effort actually examining the case, but is wearing the applicant down nonetheless. Consider it takes little time to generate improper restrictions and issue notices of non-compliant amendments, and in terms of actual examination the examiner is really only required to search a single feature. As you can see, this is not where you want to be. If you do find yourself here, consider a divisional and then traverse like crazy when you get the initial restriction.
Even if the applicant elects with traverse, the examiner will likely follow a similar approach, except this time the applicant has a stronger ability to push back via petition.
Continuing with the case where the applicant traversed the initial restriction, again consider the similar situation where the examiner is refusing entry because amendments allegedly include non-elected features. The applicant can file a response to the notice of non-compliance as well as a petition challenging not only the original restriction, but also the refusal to enter amendments (as theses are parallel challenges). The applicant could not have petitioned right away against the restriction, as it must be made final. But the notice of non-compliance effectively acts to finalize the restriction enabling the applicant the ability to immediately petition. The beauty of this approach is that, in the right situation (where the restriction is improper), the arguments against the refusal to enter likely dovetail with the arguments against the restriction in the first place. This is because the applicant is likely trying to add features disclosed as usable together, which is exactly why the restriction is improper (in that the features cannot be mutually exclusive). Of course, this assumes that in filing the response to the restriction, the applicant was already making amendments to combine features from the various alleged species.
In a recent example that followed the fact pattern in the paragraph immediately above, it was possible to achieve a successful decision on the petition even before the first action on the merits. This then requires the examiner to do a full examination right from the start, giving the applicant much better information, and many better options, to continue the fight against a difficult examiner.
To have a fighting chance as explained above, it takes a lot of coordination and strategy, right from the first restriction. When that first restriction comes, you have to use examiner data to know your are in for a fight and prepare appropriately - traverse the restriction and make amendments to force the examiner to have untenable positions and thus maximize your arguments for the eventual petition. Then, when the notice of non-entry comes, immediately coordinate a response and petition. All this just to get to the proper first action on the merits that you should have had. While difficult, it is much less difficult than the path to prosecution before you should the initial response to the restriction follow the typical path of an election without traverse.
While some examiners follow needlessly esoteric and complex maneuverings that only serve to degrade the reputation of the Office in the eyes of applicants, remember that on average most examiners are reasonable and just trying to do good work. That said, better safe than sorry with a traverse of a restriction.