NARROWED & RESTRICTIVE EXAMINATION PROCESS

Perhaps it is only me. However I continue to note the categorization and “rush through” practiced by examiners. For example, the applicant is not able to amend the claims to refocus the claimed invention. This seems contrary to 37 CFR 1.111 (MPEP 714.02).

“In amending in reply to a rejection of claims in an application or patent under reexamination, the applicant or patent owner must clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. The applicant or patent owner must also show how the amendments avoid such references or objections.”

However, I have offered amended claims overcoming the prior art cited by the examiner but had the examiner refuse to consider the offered amendments under 37 CFR 1.145 (MPEP 821.03). The rationale being claims added by amendment following action by the examiner to an invention other than previously claimed, should be treated as indicated by 37 CFR 1.145.

“If after an office action on an application, the applicant presents claims directed to an invention distinct from and independent of the invention previously claimed, the applicant will be required to restrict the claims to the invention previously claimed if the amendment is entered subject to reconsideration and review as provided in 1.143 and 1.144.
It seems that MPEP 821.03 is becoming a response of choice. The options are to prepare petitions or to attempt to rationalize that the newly offered amendment directed to the same invention as previously claims.

Will the examiner’s requirement to restrict the invention exempt a subsequent divisional application from the limitations upon continuations and requests for continued examinations?