Knowing When To Petition

Having the right prosecution strategy requires balancing the risks and rewards of specific actions in terms of obtaining the desired claim scope at the end of the day given cost and timing constraints. As discussed in many previous posts, restriction requirements pose many issues but the prosecution strategy does not always counsel petitioning improper restrictions. Sometimes giving the Office another chance to review claims leads to more problems than it solves.

Consider an example illustrated in US 14/549,075. The Applicant received what was, on all accounts, a likely improper restriction. However, at the same time, the Examiner actually allowed the broad elected claims and issued an Ex Parte Quayle action (closing prosecution on the merits and requiring cancellation of un-elected claims). Here, the choice was between accepting the restriction (and then incurring the costs of a divisional filing and related prosecution) or pursuing a petition. While winning the petition was likely, the consequence is that the Examiner must now examine all of the claims. In doing so, the Examiner found additional prior art and formed new obviousness rejections. While in some ways this may be a good result if the Applicant can convince the Office that the newly cited references are deficient, it also illustrates the risks of certain actions. 

So, just because you can win a petition does not always mean it is the optimal approach as it depends on your goals and strategy.