How does an examiner determine if there is a serious search and/or examination burden for subcombinations?
An examiner determines if there is a serious search and/or examination burden for subcombinations by considering several factors. According to MPEP 806.05(d):
“A serious search burden can be evidenced by separate classification, status, or field of search and a serious examination burden can be evidenced by, for example, non-prior art issues relevant to one invention that are not relevant to the other invention. See MPEP § 808.02.”
This means the examiner must provide specific reasons why searching and examining all claimed inventions would be burdensome, such as:
- The inventions have acquired separate status in the art due to their recognized divergent subject matter
- The inventions require different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries)
- The prior art applicable to one invention would not likely be applicable to another invention
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