How can an applicant challenge a restriction requirement between apparatus and product claims?

An applicant can challenge a restriction requirement between apparatus and product claims by providing evidence or convincing arguments that the examiner’s suggested alternative is not workable. The MPEP 806.05(g) states:

“If applicant either proves or provides convincing argument that the alternative example suggested by the examiner is not workable, the burden is on the examiner to suggest another viable example or withdraw the restriction requirement.”

To challenge the restriction requirement effectively, an applicant should:

• Carefully review the examiner’s reasoning and examples
• Provide technical evidence or arguments demonstrating why the examiner’s suggested alternative is not feasible
• If applicable, explain why the apparatus and product claims are not distinct inventions

If the applicant’s challenge is successful, the examiner must either provide another viable example or withdraw the restriction requirement.

To learn more:

• restriction requirement
• apparatus claims
• product claims
• patent examination
• challenging restriction