How can a serious examination burden be demonstrated in a restriction requirement?
A serious examination burden can be prima facie shown through appropriate explanation of non-prior art issues that are relevant to one invention but not to the other. According to MPEP 803:
“Similarly, a serious examination burden, for example, may be prima facie shown by appropriate explanation of non-prior art issues under 35 U.S.C. 101, pre-AIA 35 U.S.C. 112, first paragraph, and/or 35 U.S.C. 112(a) relevant to one invention that are not relevant to the other invention.”
This means that if examining all claims would require the examiner to address significantly different legal or technical issues for different inventions, it can justify a restriction requirement. For example, one invention might raise unique subject matter eligibility questions under 35 U.S.C. 101 that don’t apply to the other invention.
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