What are the criteria for establishing distinctness between a combination and subcombination?
What are the criteria for establishing distinctness between a combination and subcombination?
To establish distinctness between a combination and subcombination, two criteria must be met:
- 1. The combination as claimed does not require the particulars of the subcombination as claimed for patentability (e.g., to show novelty and unobviousness).
- 2. The subcombination has utility by itself or in other combinations (MPEP § 806.05(c), subsection II).
The MPEP states: “To support a requirement for restriction between combination and subcombination inventions, both two-way distinctness and reasons for insisting on restriction are necessary, i.e., there would be a serious search burden if restriction were not required as evidenced by separate classification, status, or field of search.” (MPEP 806.05(a))
To learn more: