How does the MPEP define “evidence of separate utility” for subcombinations?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

How does the MPEP define “evidence of separate utility” for subcombinations?

The MPEP 806.05(c) provides guidance on what constitutes evidence of separate utility for subcombinations:

“The examiner must show, by way of example, that the subcombination has utility other than in the disclosed combination.”

This means that the subcombination must have a use either by itself or in a different combination than the one claimed. The evidence can include:

• Statements in the specification indicating alternative uses
• Common knowledge in the art about other applications of the subcombination
• References demonstrating the subcombination’s utility in other contexts

Examiners must provide this evidence to support a restriction requirement between a combination and subcombination.