In my experience a large majority of restriction requirements and election requirements (from the USPTO) do not comply with the law. This slideshow presents ideas for resisting them cost-effectively, usually without the necessity of filing a petition.

1. Three Strategies
for Minimizing Cost and Delay
in Restriction and Election Practice in the USPTO
(using Scenarios 1 through 5)

2. Assumptions

3. 1. Some PTO examiners will not exercise discretion in our favor.
2. Some PTO examiners perceive that they have the moral high ground.
Assumptions

4. 1. Some PTO examiners will not exercise discretion in our favor.
2. Some PTO examiners perceive that they have the moral high ground.
3. Some PTO examiners recognize that petition and appeal practice is
unfamiliar to many practitioners and too costly for many clients.
4. It is not certain that a meritorious petition or appeal will get a proper
response at the PTO.
Assumptions

5. 1. Some PTO examiners will not exercise discretion in our favor.
2. Some PTO examiners perceive that they have the moral high ground.
3. Some PTO examiners recognize that petition and appeal practice is
unfamiliar to many practitioners and too costly for many clients.
4. It is not certain that a meritorious petition or appeal will get a proper
response at the PTO.
5. If we have to file petitions and appeals, we want to be in the best
possible position to do so.
6. We also want few claims to be withdrawn from consideration, if any,
even while petitions and appeals are pending.
Assumptions

6. 41. (ORIGINAL) A medical system comprising:
a first module configured to do some really important stuff; and
a second module operably coupled to the first module and configured to do other stuff.
42. (ORIGINAL) The medical system of claim 41 in which the first module comprises:
a first dispenser operably coupled with at least the first module.
43. (ORIGINAL) The medical system of claim 41 in which the first module comprises:
more than one dose of a first therapeutic material within the second module.
44. (ORIGINAL) The medical system of claim 41 in which the first module comprises:
a second dispenser.
45. (ORIGINAL) The medical system of claim 41 in which the first module comprises:
a support element operable for supporting the second module.
46. (ORIGINAL) The medical system of claim 41, further comprising:
the second module configured to do the other stuff over a period of more than a day.

7. Applicant is required to elect one of the following patentably distinct species:
Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module
The species are independent or distinct because claims to the
different species recite the mutually exclusive characteristics
of such species . . . .
[To be complete,] the reply to this requirement must include …
(i) an election of a species to be examined even though the requirement may be
traversed; and
(ii) identification of the claims encompassing the elected species, including any
claims subsequently added.

8. Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module

9. Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module
How is that
“mutually
exclusive”?

10. Scenario #1 Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module
How is that
“mutually
exclusive”?

11. “Grudging
Cooperation”
Scenario #1 Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module
How is that
“mutually
exclusive”?

12. “Grudging
Cooperation”
I elect
Species A,
but WITH
TRAVERSE
!!!
Scenario #1 Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module
How is that
“mutually
exclusive”?

13. “Grudging
Cooperation”
I elect
Species A,
but WITH
TRAVERSE
!!!
Scenario #1 Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module

14. “Grudging
Cooperation”
I elect
Species A,
but WITH
TRAVERSE
!!!
All claims
are
readable
on
Species A.
Scenario #1 Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module

15. “Grudging
Cooperation”
I elect
Species A,
but WITH
TRAVERSE
!!!
All claims
are
readable
on
Species A.
Claims 43-46
are drawn to
non-elected
species
Scenario #1

16. “Grudging
Cooperation”
I elect
Species A,
but WITH
TRAVERSE
!!!
All claims
are
readable
on
Species A.
… and
withdrawn
from
consideration.
Claims 43-46
are drawn to
non-elected
species
Scenario #1

17. “Grudging
Cooperation”
I elect
Species A,
but WITH
TRAVERSE
!!!
All claims
are
readable
on
Species A.
… and
withdrawn
from
consideration.
Claims 43-46
are drawn to
non-elected
species
Scenario #1

18. Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module

19. Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module
4 Applicant respectfully calls the Examiner’s attention to this portion of the MPEP:
Where two or more species are claimed, a requirement for restriction to a single
species may be proper if the species are mutually exclusive. Claims to different
species are mutually exclusive if one claim recites limitations disclosed for a first
species but not a second, while a second claim recites limitations disclosed only for
the second species and not the first. This may also be expressed by saying that to
require restriction between claims limited to species, the claims must not overlap
in scope.
MPEP 806.04 (f) (emphasis added). The Examiner has indicated that species A through E
of the present Restriction Requirement do not overlap, for example, but has not
supported this view with any evidence or coherent explanation. Applicants accordingly
request withdrawal of the present Restriction Requirement.

20. Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module
How is that
“mutually
exclusive”?

21. Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module
How is that
“mutually
exclusive”?

22. Scenario #2 Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module
How is that
“mutually
exclusive”?

23. Scenario #2
“Overt Aggression”
Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module
How is that
“mutually
exclusive”?

24. Scenario #2
It’s not
possible for
us to choose
among these
“Species.”
“Overt Aggression”
Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module
How is that
“mutually
exclusive”?

25. Scenario #2
It’s not
possible for
us to choose
among these
“Species.”
“Overt Aggression”
Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module

26. Scenario #2
It’s not
possible for
us to choose
among these
“Species.”
“Overt Aggression”

27. Scenario #2
Applicant’s
“response” is
unresponsive.
It’s not
possible for
us to choose
among these
“Species.”
“Overt Aggression”

28. Scenario #2
Applicant’s
“response” is
unresponsive.
It’s not
possible for
us to choose
among these
“Species.”
“Overt Aggression”
Comply
or go
abandoned.

29. Scenario #2
Applicant’s
“response” is
unresponsive.
It’s not
possible for
us to choose
among these
“Species.”
“Overt Aggression”
Comply
or go
abandoned.

30. Strategy A: Picture Claims
(narrow independent or dependent claims, often not commercially valuable,
combining phrases of many dependent claims)

31. Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module

32. Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module
46. (ORIGINAL) The medical system of claim 41, further comprising:
the second module configured to do the other stuff over a period of more than a
day.
47. (NEW) The medical system of claim 46 in which the first module
comprises:
a first dispenser operably coupled with at least the first module;
more than one dose of a first therapeutic material within the second module;
a second dispenser; and
a support element operable for supporting the second module.

33. Scenario #3
“Overt Aggression”
Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module

34. Scenario #3
We
elect all five
“Species.”
“Overt Aggression”
Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module

35. Scenario #3
We
elect all five
“Species.”
“Overt Aggression”
Arg #1
.
.
.
Arg #99
Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module

36. Scenario #3
We
elect all five
“Species.”
“Overt Aggression”
Arg #1
.
.
.
Arg #99
Claim 47
proves that the
“Species” may
overlap.
Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module
46. (ORIGINAL) The medical system of claim 41, further comprising:
a second module, operable to remain at least partly within an esophagus
or intestine of the digestive or respiratory tract for more than a day.
47. (NEW) The medical system of claim 46 in which the first module
comprises:
a first dispenser operably coupled with at least the first module;
more than one dose of a first therapeutic material within the second
module;
a second dispenser; and
a support element operable for supporting the second module.

37. Scenario #3
We
elect all five
“Species.”
“Overt Aggression”
Arg #1
.
.
.
Arg #99
Claim 47
proves that the
“Species” may
overlap.
Hmmm …

38. Scenario #3
We
elect all five
“Species.”
“Overt Aggression”
Arg #1
.
.
.
Arg #99
Claim 47
proves that the
“Species” may
overlap.
Hmmm …
For no additional time
or trouble, I have an
opportunity to teach
this rich clown some
respect.

39. Scenario #3
Applicant’s
“response” is
unresponsive.
We
elect all five
“Species.”
“Overt Aggression”
Arg #1
.
.
.
Arg #99
Claim 47
proves that the
“Species” may
overlap.

40. Scenario #3
Applicant’s
“response” is
unresponsive.
We
elect all five
“Species.”
“Overt Aggression”
Comply
or go
abandoned.
Arg #1
.
.
.
Arg #99
Claim 47
proves that the
“Species” may
overlap.

41. Scenario #3
Applicant’s
“response” is
unresponsive.
We
elect all five
“Species.”
“Overt Aggression”
Comply
or go
abandoned.
Arg #1
.
.
.
Arg #99
Claim 47
proves that the
“Species” may
overlap.

42. Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module

43. Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module

44. “Partial Aggression”
Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module

45. Strategy B: Partial Aggression
(giving the Examiner an opportunity to save face and appear to win
something even while reinforcing the message that the
Restriction Requirement wasn’t worth the trouble)

46. Scenario #4
“Partial Aggression”
Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module

47. Scenario #4
We
provisionally
elect
“Species”
A – C.
“Partial Aggression”
Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module

48. Scenario #4
We
provisionally
elect
“Species”
A – C.
“Partial Aggression”
If that’s
too many,
please call us to
discuss and
explain.
Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module

49. Scenario #4
We
provisionally
elect
“Species”
A – C.
“Partial Aggression”
If that’s
too many,
please call us to
discuss and
explain.
This election
is valid only if it
will result in
claim 47 being
examined.
Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module
46. (ORIGINAL) The medical system of claim 41, further comprising:
a second module, operable to remain at least partly within an esophagus
or intestine of the digestive or respiratory tract for more than a day.
47. (NEW) The medical system of claim 46 in which the first module
comprises:
a first dispenser operably coupled with at least the first module;
more than one dose of a first therapeutic material within the second
module;
a second dispenser; and
a support element operable for supporting the second module.

50. Scenario #4
We
provisionally
elect
“Species”
A – C.
“Partial Aggression”
If that’s
too many,
please call us to
discuss and
explain.
This election
is valid only if it
will result in
claim 47 being
examined.
Possible
Response
Hmmm …
One
Possible
Response

51. Scenario #4
We
provisionally
elect
“Species”
A – C.
“Partial Aggression”
If that’s
too many,
please call us to
discuss and
explain.
This election
is valid only if it
will result in
claim 47 being
examined.
Possible
Response
Hmmm …
At least I can tell my
SPE that we excluded
two species. And we
can’t win on
petition…
One
Possible
Response

52. Scenario #4
We
provisionally
elect
“Species”
A – C.
“Partial Aggression”
If that’s
too many,
please call us to
discuss and
explain.
This election
is valid only if it
will result in
claim 47 being
examined.
Possible
Response
Hmmm …
At least I can tell my
SPE that we excluded
two species. And we
can’t win on
petition…
One
Possible
Response
Accept the
election and
examine
claims 41-44,
and 46-47

53. Scenario #4
We
provisionally
elect
“Species”
A – C.
“Partial Aggression”
If that’s
too many,
please call us to
discuss and
explain.
This election
is valid only if it
will result in
claim 47 being
examined.
Another
Possible
Response

54. Scenario #4
Applicant’s
“response” is
unresponsive.
We
provisionally
elect
“Species”
A – C.
“Partial Aggression”
Comply
or go
abandoned.
If that’s
too many,
please call us to
discuss and
explain.
This election
is valid only if it
will result in
claim 47 being
examined.
Another
Possible
Response

55. Scenario #4
Applicant’s
“response” is
unresponsive.
We
provisionally
elect
“Species”
A – C.
“Partial Aggression”
Comply
or go
abandoned.
If that’s
too many,
please call us to
discuss and
explain.
This election
is valid only if it
will result in
claim 47 being
examined.
Another
Possible
Response
Telephone
Interview

56. Scenario #4
We
provisionally
elect
“Species”
A – C.
“Partial Aggression”
If that’s
too many,
please call us to
discuss and
explain.
This election
is valid only if it
will result in
claim 47 being
examined.
Another
Possible
Response
But, at that
telephone
interview …

57. Scenario #4
You tried
to draft around
my Restriction
Requirement.
We
provisionally
elect
“Species”
A – C.
“Partial Aggression”
If that’s
too many,
please call us to
discuss and
explain.
This election
is valid only if it
will result in
claim 47 being
examined.
Another
Possible
Response

58. Scenario #4
You tried
to draft around
my Restriction
Requirement.
We
provisionally
elect
“Species”
A – C.
“Partial Aggression”
If that’s
too many,
please call us to
discuss and
explain.
This election
is valid only if it
will result in
claim 47 being
examined.
Another
Possible
Response
To have
claim 47
examined you
must file
an RCE.

59. Scenario #4
You tried
to draft around
my Restriction
Requirement.
We
provisionally
elect
“Species”
A – C.
“Partial Aggression”
To have
claim 47
examined you
must file
an RCE.
If that’s
too many,
please call us to
discuss and
explain.
This election
is valid only if it
will result in
claim 47 being
examined.
Another
Possible
Response

60. Strategy B: Partial Aggression
(giving the Examiner an opportunity to save face and appear to win
something even while reinforcing the message that the
Restriction Requirement wasn’t worth the trouble)

61. Strategy C: Proactivity
(filing early picture claims to preempt any notion that the
Examiner’s Restriction Requirement deserves respect)

62. Scenario #5
not “NEW”
46. (ORIGINAL) The medical system of claim 41, further comprising:
a second module, operable to remain at least partly within an esophagus
or intestine of the digestive or respiratory tract for more than a day.
47. (PREVIOUSLY PRESENTED) The medical system of claim 46 in which
the first module comprises:
a first dispenser operably coupled with at least the first module;
more than one dose of a first therapeutic material within the second
module;
a second dispenser; and
a support element operable for supporting the second module.

63. Scenario #5
You tried
to draft around
my Restriction
Requirement.
Hypothetical
Response

64. Scenario #5
You tried
to draft around
my Restriction
Requirement.
“Well Positioned”
Hypothetical
Response

65. Scenario #5
You tried
to draft around
my Restriction
Requirement.
“Well Positioned”
Golly,
we mainly just
wanted to get at
least claim 47
examined.
Hypothetical
Response

66. Scenario #5
“Well Positioned”
Hmmm …
Next time we see
these picture claims,
let’s not bother with a
Restriction
Requirement.
Another
Possible
Response
Hypothetical
Response

67. Strategy C: Proactivity
(filing early picture claims to preempt any notion that the
Examiner’s Restriction Requirement deserves respect)

68. Proactivity
(filing early picture claims to preempt any notion that the
Examiner’s Restriction Requirement deserves respect)
Partial Aggression
(giving the Examiner an opportunity to save face and appear to win
something even while reinforcing the message that the
Restriction Requirement wasn’t worth the trouble)
Picture Claims
(narrow independent or dependent claims, often not commercially
valuable, combining phrases of many dependent claims)

70. What’s a “species”?

71. 4 Applicant respectfully calls the Examiner’s attention to this portion of the MPEP:
Where two or more species are claimed, a requirement for restriction to a single
species may be proper if the species are mutually exclusive. Claims to different
species are mutually exclusive if one claim recites limitations disclosed for a first
species but not a second, while a second claim recites limitations disclosed only for
the second species and not the first. This may also be expressed by saying that to
require restriction between claims limited to species, the claims must not overlap
in scope.
MPEP 806.04 (f) (emphasis added). The Examiner has indicated that species A through E
of the present Restriction Requirement do not overlap, for example, but has not
supported this view with any evidence or coherent explanation. Applicants accordingly
request withdrawal of the present Restriction Requirement.
What’s a “species”?

72. Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module
4 Applicant respectfully calls the Examiner’s attention to this portion of the MPEP:
Where two or more species are claimed, a requirement for restriction to a single
species may be proper if the species are mutually exclusive. Claims to different
species are mutually exclusive if one claim recites limitations disclosed for a first
species but not a second, while a second claim recites limitations disclosed only for
the second species and not the first. This may also be expressed by saying that to
require restriction between claims limited to species, the claims must not overlap
in scope.
MPEP 806.04 (f) (emphasis added). The Examiner has indicated that species A through E
of the present Restriction Requirement do not overlap, for example, but has not
supported this view with any evidence or coherent explanation. Applicants accordingly
request withdrawal of the present Restriction Requirement.
What’s a “species”?

73. What’s a “species”? Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module

74. What’s a “species”? Species A: having a first dispenser
Species B: having more than one dose
Species C: having a second dispenser
Species D: having a support element
Species E: having a second module
a species

75. When is a restriction requirement or
species election proper?
a species

76. When is a restriction requirement or
species election proper?
When there truly
is no overlap
between
claimed
combinations

77. Are these truly mutually exclusive?
“treating a
disease
state”
“… affecting
a reptile”
“… affecting
a human”
???

78. Are these truly mutually exclusive?
“an
identifier
of a
pathogen” “… wherein
the pathogen
is a
bacterium”“… wherein
the pathogen
is a virus”
???

79. Are these truly mutually exclusive?
“implementing
a therapeutic
regimen” “… by a
surgical
procedure”
“… without
any
surgery”
???

80. Petition Practice Points

81. 1. Decisions of an examiner that are of a discretionary, procedural, or
non-substantive nature and that are not directly connected with the merits of
issues involving rejections of claims are typically reviewable by petition under 37
C.F.R. § 1.181.
2. Response due dates remain in effect irrespective of a petition.
3. I recommend that you traverse election of species requirements with care.
4. I recommend that you do not cancel claims that the Examiner has withdrawn
from consideration, at least not until the RR is made final.
5. You must request reconsideration of the RR to qualify for petition.
6. A petition must be made (a) after the RR is repeated or made final and
(b) before filing an appeal.
7. Most petitions for RR are granted in full or in part in ~ 90 days.
(Nevertheless, less than 1% of RR’s are petitioned.)
Petition Practice Points

82. 1. Decisions of an examiner that are of a discretionary, procedural, or
non-substantive nature and that are not directly connected with the merits of
issues involving rejections of claims are typically reviewable by petition under 37
C.F.R. § 1.181.
2. Response due dates remain in effect irrespective of a petition.
3. I recommend that you traverse election of species requirements with care.
4. I recommend that you do not cancel claims that the Examiner has withdrawn
from consideration, at least not until the RR is made final.
5. You must request reconsideration of the RR to qualify for petition.
6. A petition must be made (a) after the RR is repeated or made final and
(b) before filing an appeal.
7. Most petitions for RR are granted in full or in part in ~ 90 days.
(Nevertheless, less than 1% of RR’s are petitioned.)
Petition Practice Points

83. 1. Decisions of an examiner that are of a discretionary, procedural, or
non-substantive nature and that are not directly connected with the merits of
issues involving rejections of claims are typically reviewable by petition under 37
C.F.R. § 1.181.
2. Response due dates remain in effect irrespective of a petition.
3. I recommend that you traverse election of species requirements with care.
4. I recommend that you do not cancel claims that the Examiner has withdrawn
from consideration, at least not until the RR is made final.
5. You must request reconsideration of the RR to qualify for petition.
6. A petition must be made (a) after the RR is repeated or made final and
(b) before filing an appeal.
7. Most petitions for RR are granted in full or in part in ~ 90 days.
(Nevertheless, less than 1% of RR’s are petitioned.)
Petition Practice Points

84. 1. Decisions of an examiner that are of a discretionary, procedural, or
non-substantive nature and that are not directly connected with the merits of
issues involving rejections of claims are typically reviewable by petition under 37
C.F.R. § 1.181.
2. Response due dates remain in effect irrespective of a petition.
3. I recommend that you traverse election of species requirements with care.
4. I recommend that you do not cancel claims that the Examiner has withdrawn
from consideration, at least not until the RR is made final.
5. You must request reconsideration of the RR to qualify for petition.
6. A petition must be made (a) after the RR is repeated or made final and
(b) before filing an appeal.
7. Most petitions for RR are granted in full or in part in ~ 90 days.
(Nevertheless, less than 1% of RR’s are petitioned.)
Petition Practice Points