How can an applicant respond to a restriction requirement between process and product claims?

When faced with a restriction requirement between process and product claims under MPEP 806.05(f), an applicant has several options:

1. Elect one group: Choose either the process or product claims for examination.
2. Traverse the requirement: Argue against the distinctness assertion by:
   • Demonstrating that the process cannot make a materially different product.
   • Showing that the product cannot be made by a materially different process.
   • Providing evidence that the examiner’s reasoning is flawed or not applicable.
3. Amend the claims: Modify the claims to overcome the distinctness issue, potentially making them dependent on each other.
4. File a divisional application: Pursue the non-elected claims in a separate application while maintaining the benefit of the original filing date.

It’s important to note that the response should be submitted within the time period specified in the restriction requirement, typically two months from the mailing date of the requirement.

To learn more:

• restriction requirement
• process claims
• product claims
• patent application response