How does the presence of a specific combination claim (ABsp) affect restriction requirements?

The presence of a specific combination claim (AB_sp) does not necessarily affect the propriety of a restriction requirement between a broad combination (AB_br) and a subcombination (B_sp). The MPEP clarifies:

“The presence of a claim to combination AB_sp does not alter the propriety of a restriction requirement properly made between combination AB_br and subcombination B_sp.”

However, if the combination claims are amended after a restriction requirement such that each combination requires all the limitations of the subcombination, the restriction should not be maintained. The MPEP states:

“If the combination claims are amended after a restriction requirement such that each combination, as claimed, requires all the limitations of the subcombination as claimed, i.e., if the evidence claim AB_br is deleted or amended to require B_sp, the restriction requirement between the combination and subcombination should not be maintained.”

This guidance ensures that restriction requirements remain appropriate as claims are amended during prosecution.

To learn more:

• specific combination claim
• broad combination
• subcombination
• restriction requirements
• patent examination