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Patent Guide: VI. Restriction Requirement

Restriction requirements are where you are claiming two different inventions in the same application. For example, if your claim 1 is for "method of creating ball lightning" and your claim 2 is for "eating with a spork," no examiner at the U.S. Patent Office is going to examine both those claims. They'll give you a "restriction requirement," often for simply claiming a method and device in the same applicaton. We received one for our RFID Bingo Ball patent application. It looked something like this (we've excerpted the important lines):

We were claiming bingo balls with freely floating transmitters in them, regardless of whether it was for the "game of chance" (bingo game using transmitters), "balls for a ball selector" (bingo balls with transmitters), or "ball selector." We made that point to the Examiner and said, hey, look:

. . . the claims are so intertwined as to require the same amount of searching, regardless. An eventual patent for any one of these groupings of claims will likely be placed in each subclass.

We then gave some examples of this:

For example, while claim 13 is within the second group for balls used in a ball selector, the claim actually recites structure of a balls selector, which is in group III.

. . . and went on with other arguments. As such, we did end up (eventually) getting all the claims examined and into one patent. If you can't overcome the rejection, you have to file a "divisional" which is nothing more than another filing of the same patent application with some claims not examined the first time around.

Now let's move on to an example of a substantive rejection. These are typical - most cases receive at least an initial rejection. Such examinations / rejections are called VII. OFFICE ACTIONS.

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