If a patent examiner tries to force a restriction on 1 of 2 independent claims, and the applicant elects to tie them together as obviously connected, is it legal for the examiner to dismiss both if he allegedly finds that just one is unallowable? And what is a "traverse"? From the Action: "Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. ln either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AlA 35 U.S.C. 103(a) of the other invention."

1 Answer 1


It sounds like - in a restriction requirement the examiner said two claims were so different they could not be examined as a single invention. You responded that they were not that different and should be examined as a single invention. He/she took that response as you admitting they were not patentably distinct. If they are not (by your admission) patentably distinct, then if one is not patentable, neither is the other.

In this context a "traverse" is an argument you make to counter the examiner's restriction requirement analysis. If you said that both should be examined in the same case, you essentially made a traverse even though you may have not provided any actual argument.

It is not necessary to admit two claims are patently the same to traverse. You can argue that they are close enough to not be a burden on the examiner's time. The most likely outcome for a traverse is the examiner saying you were not persuasive and then just pursuing the claim you prefered in your response.

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