Can a subcombination be claimed in a dependent claim of a combination?
Can a subcombination be claimed in a dependent claim of a combination?
Yes, a subcombination can be claimed in a dependent claim of a combination. However, this doesn’t necessarily prevent a restriction requirement. The MPEP 806.05(a) provides guidance on this situation:
“The presence of a combination claim in an application, whether allowed or rejected, does not in itself preclude a subcombination from being held to be nonelected or nonallowable. The criterion of distinctness is the same regardless of the manner in which the inventions are claimed.”
This means that:
- A subcombination can be included in a dependent claim of a combination.
- The presence of such a claim doesn’t automatically prevent a restriction requirement.
- The examiner will still apply the same criteria for distinctness, regardless of how the inventions are claimed.
For example, a claim for a computer (combination) might have a dependent claim specifying a particular type of processor (subcombination). The examiner would still assess whether the computer’s patentability relies on that specific processor and if the processor has separate utility.
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