How does an examiner make a restriction requirement between process and apparatus claims?
An examiner can use Form Paragraph 8.17 to make restriction requirements between process and apparatus claims. The form paragraph states:
“[1] and [2] are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another materially different process. (MPEP § 806.05(e)). In this case [3].”
The examiner must provide specific examples or reasons in bracket [3] to support the restriction requirement. As per MPEP § 806.05(e), “The burden is on the examiner to provide reasonable examples that recite material differences.”
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