What is Form Paragraph 8.19 and how is it used in patent examination?
Form Paragraph 8.19 is a standardized text used by patent examiners to communicate a restriction requirement between apparatus and product claims. According to MPEP 806.05(g), it states:
“¶ 8.19 Apparatus and Product Made Inventions [1] and [2] are related as apparatus and product made. The inventions in this relationship are distinct if either or both of the following can be shown: (1) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus can be used for making a materially different product or (2) that the product as claimed can be made by another materially different apparatus (MPEP § 806.05(g)).”
Examiners use this form paragraph to clearly communicate the basis for a restriction requirement between apparatus and product claims. They must provide specific examples to support the restriction, which are inserted into the bracketed areas of the form paragraph.
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