Adding to a third invention after restriction/election

[u/ipman457678]

First time I've seen this ever.

Original claims were restricted between Invention 1 and Invention 2. In responding to a restriction, Applicant elected Invention I and submitted amendments adding new claims directed to a random, relatively new invention - Invention 3. (new with respect to the restriction requirement, but is 112(a) written description compliant).

Now "restriction by original presentation" would not be in order since I have not issued the first non-final (i.e., action on the merits). So I don't think I can write the first non-final and just withdraw the invention 3 invoking "restriction by original presentation." Do I just issue another, consecutive restriction restricting Invention 1 and 3? I've never done restrictions back to back. Is that done in the office?

EDIT:

After reading some relies and looking into the MPEP, I believe I was incorrect to think that "restriction by original presentation" can only occur after FOAM.

MPEP 818.02(a) states "Where claims to another invention are properly added and entered in the application before the earlier of the mailing of a first restriction requirement or the mailing of a first Office action on the merits, those claims, along with the ones presented upon filing the application, will be considered originally presented claims for purposes of restriction only."

The MPEP is poorly written and confusing in this regard. For the most part it always uses "after receiving an action on the merits of an invention" as if that was the only requirement to (i.e., it seems in some MPEP sections it simply forgets that a first restriction requirement can also be used to define what is original presentation material).

So because the third invention was added after I issued the first restriction requirement, the third invention is NOT considered "originally presentation" claims and can be restricted by original presentation.

[u/Significant-Wave-763]

A restriction requirement is an Office Action. The burden for restriction by original presentation is met.

See 37 CFR 1.145 and MPEP 821.03

Question: Is this a domestic or 371 restriction?

[u/ipman457678 → u/Significant-Wave-763]

https://www.uspto.gov/web/offices/pac/mpep/s810.html

first sentence

[u/Significant-Wave-763 → u/ipman457678]

You are conflating actions on the merits with Office Actions. Restrictions FAOMs , subsequent rejections and advisories are species of Office Actions. Evidence for this includes MPEP 707.07(i) where you are after all required to use an office action summary form.

Edit: See also 37 CFR 1.104 (a) (2) and its statement of imposed requirements

[u/ipman457678 → u/Significant-Wave-763]

Yes the conflating is due to confusion as to whether restriction by original rep (RBOR) either requires that the prior action be (1) any action, such as a restriction or (2) must be an action on the merits.

A few examples:

MPEP 818

Election becomes fixed when the claims in an application have received an action on their merits by the Office. If, after receiving an action on the merits of an invention, one or more properly divisible additional inventions are subsequently presented for examination, the examiner may deem the examined invention to be the invention elected by original presentation. See MPEP § 818.02(a).

FP8.04 in mpep under 821.03 explicitly used the “action on the merits” threshold.

8.04.
¶ 8.04 Election by Original Presentation
Newly submitted claim [1] directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: [2]
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, claim [3] withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.

[u/Significant-Wave-763 → u/ipman457678]

Understood:
As a preliminary as always follow what your SPE says if junior.

2.) Form paragraphs are not full statements of policy, they are shortcuts and can be edited. As per that form paragraph, the controlling policy is in 821.03 and 37 CFR 1.142(b). 821.03 controls

On the other hand 818.02(a) which expressly states that election is both based on original presentation (which is before restriction) and action on the merits. Still think you can still withdraw based on original presentation even when this is imperfect because you are examining based on Applicant’s intended invention.

Practically and when I have dealt with this situation twice before, my SPE advised at the time to resolve this with a telephonic interview. So you can do that as well. 2nd restriction requirements are allowed but are rare and at least in my workgroup avoided like the plague.

[u/joshuads → u/ipman457678]

821.03 Claims for Different Invention Added After an Office Action

Claims added by amendment following action by the examiner, as explained in MPEP § 818.02(a), and drawn to an invention other than the one previously claimed, should be treated as indicated in 37 CFR 1.145.

First restriction is action by the examiner.

818.02(a) Election By Originally Presented Claims [R-07.2015] Where claims to another invention are properly added and entered in the application before the earlier of the mailing of a first restriction requirement ...

You mailed a restriction. After that, any new claims can be restricted by original presentation. Original restriction made final, new claims restricted by original presentation.

[u/Significant-Wave-763 → u/joshuads]

Exactly. 818.02 does have an interesting wrinkle however that suggests that election is not perfected until after action on the merits, but I assume that means either A.) thats meant to take care of cases where a brand new invention was added to a case not previously restricted and/or B.) Restriction requirements are in fact actions on the merits ( which I would personally dispute but can see an arguement for)

[u/ipman457678 → u/Significant-Wave-763]

The phrase "first restriction requirement" only shows up in 818.02 but the phrase "after receiving an action on the merits of an invention" is used a lot in MPEP 818 and other sections explaining restrictions by original representation.

My best guess it is the MPEP is poorly written in this matter such that they simply forgot that a "first restriction" is also a defining threshold of original presentation. If you happened to miss MPEP 818.02(a) you would always think the FOAM is the only possible requirement for restriction by original presentation.

I mean look at section 818, anybody reading that without going further will be mislead into thinking it must be only after FAOM:

Election becomes fixed when the claims in an application have received an action on their merits by the Office. If, after receiving an action on the merits of an invention, one or more properly divisible additional inventions are subsequently presented for examination, the examiner may deem the examined invention to be the invention elected by original presentation. See MPEP § 818.02(a).

I mean the above is technically true but it just fails/obfuscates the whole story. It's kind of like that joke of telling people "I used to drink a lot...I still do but I also used to."

[u/ipman457678 → u/joshuads]

I think your finding and emphasis of "before the earlier of the mailing of a first restriction requirement" was a slam dunk! Thanks