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I've received a letter from USPTO telling that the patent application contains two distinct groups of claims: 1-13, and 14. The examiner marked all 14 claims as "restricted", and now I'm unsure how to proceed. Here are the options I'm thinking about: 1. Dispute this 2. Delete claim 14 3. Reorganize claims. 4. File two separate patents

I strongly feel that all 14 claims belong to the same patent. But fighting with the examiner might be futile, and getting rid of claim 14 would be the easiest option.

Any constructive advice on how to deal with the situation and what are the trade-offs of options 1-4 is appreciated.

Thanks, Evgeni

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Evgeni,

Consider electing the first group, claims 1-13 as this group likely represents the most important aspects of your invention.

If you wish to dispute the restriction requirement, you may include language something like "Applicant elects Group 1 corresponding to claims 1-13, with traverse."

However, you must provide specific reasons why you think the two claim groups are a single invention. Otherwise, it is probably not a good idea to traverse. You can defer your decision to pursue the non-elected claim until the end of prosecution. No need to cancel the claim right now.

Traversing rarely succeeds and your recourse is a costly petition--compared to prosecuting the non-elected claims in a separate application. Also, if you do not traverse, you can proceed by telephoning the Examiner.

You may wish to see the posts here for more information: http://www.patentexpress.com/free-legal-advice/to-traverse-or-not-to-traverse-restriction_295573.html

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  • Small addition to Yorik's excelent answer: As he stated, you do not need to cancel unelected claims but they do need to be withdrawn. And, as it probably says in your office action, arguments you make now in traversing can be used against you later in a double-patenting rejection if you eventually file separately on the material in question.
    – George White
    May 29, 2013 at 22:21
  • I spoke with the examiner about electing the claims and no traverse. Well, he emphasized that it's a complex procedure and that I need an attorney to file the paperwork. Can you please outline the procedure of doing that (e.g. what forms to fill out) Jun 25, 2013 at 20:07
  • Well, I do not agree with the notion that an election restriction is complex or that you need an attorney. If you google "election restriction" and patent application, I think you will find some examples.
    – Yorick
    Jul 3, 2013 at 20:59

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