[QUESTION] In a situation where the Examiner finds an elected species to be allowable but deems the claims not enabled or lacking an adequate written description over their entire scope, another provision of the proposed rule would permit the Examiner to require restriction of the claims to the elected species. Why not allow the patentee to reduce the scope of the genus?
[RESPONSE] No, that is not exactly true. What are currently in genus/species practice that you would use for Markush Grouping, the examiners tend to limit the initial search and examination from an individual species. And they don’t have to extend that claim if the broad claim is rejectable under art or under any other acceptable statutes
If the species has the same structure and function they stay together. If the species has a different structure function, that would be a reason to split them apart and say “Okay, there’s a different invention.” So, our proposed rule has an objective part by which you would be able to identify when you have more than one invention among a set of alternatives, or within a Markush. That’s what basically what our proposed rule says. In no way in those situations would we restrict. Otherwise, standard species practice as it currently exists in the USPTO is what would be applied, if the examiner wanted to restrict. And again, remember restriction is discretionary on the part of the examiner.
The other thing that I wanted to point out , which I really didn’t get to say, is about the concern of applicants not being able to get the full scope of their invention examined. But I would compose rules, just like in a standard restriction process, applicant could file a divisional on what would be restricted out, via our proposed rules. So we could pursue the full scope of their invention or inventions in divisional applications. I assure you that when you say that is potentially problematic for the applicant, because of all of the other fees associated with the additional filing.