How can an applicant overcome a restriction requirement between a product and its process of making or using?

An applicant can overcome a restriction requirement between a product and its process of making or using in several ways:

1. Traverse the requirement: Argue that the restriction is improper by showing that the product cannot be made by a materially different process or used in a materially different way.
2. Amend the claims: Modify the claims to show that the product and process are not distinct or that they have a special technical relationship.
3. File a divisional application: Pursue the restricted claims in a separate application while maintaining the right to rejoin them later.
4. Request rejoinder: If the product claims are found allowable, request that the process claims be rejoined and examined for patentability.

According to MPEP 806.05(i):

“The examiner must show “distinct inventions” to support a restriction requirement.”

If the applicant can demonstrate that the inventions are not distinct or that examining them together would not be a serious burden, they may be able to overcome the restriction.

To learn more:

• overcome restriction requirement
• product claims
• process claims
• patent application strategy