Three in one...patent question

[ProSeToday]

Hi Brad,

Have three embodiments disclosed in my patent specification, can a single independent claim contain different elements from each of the three embodiments ? Examiner is saying no, but thought a recent court case says yes. It seems a POSITA having seen all embodiments could imagine picking and choosing the elements they want to use.

Thanks for your time.

[Brad]

It sounds to me like the examiner is giving you a a "restriction requirement".

To be honest I have never had good luck fighting the examiner on these and this is an area where I need to do more homework.  Usually what I find works best is to just pick one (broad) embodiment now to move the process forward and then if you can find something allowable ask the examiner if they will "rejoin" or let you add back in the claims or embodiments that were separated out earlier.   If that fails you would just have to get your first patent allowed and file a "divisional" or "continuation" type application to get the other embodiments examined so you end up with two patents (at twice the cost).

This is a hard area to fight the examiner on and its rare that they will bend on this issue (in my experience). 

[ProSeToday]

Thanks Brad for the reply. The examiner has found some stuff allowable and is now willing to work with me. Have updated my claims per their recommendations and have another meeting tomorrow to discuss them. Finally some light at the end of the tunnel. Thanks again for your help present and past. 

[Brad]

Great!   Having a good examiner that is willing to work with you make such a huge difference.   I often tell my clients we can write the best application in the world but if we get a difficult examiner the process can be very long (and expensive) and that's outside of our control.