What is the burden of proof for an examiner in establishing a restriction requirement between apparatus and product claims?

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.

In establishing a restriction requirement between apparatus and product claims, the burden of proof lies with the examiner. According to MPEP 806.05(g):

“The burden is on the examiner to provide an example, but the example need not be documented.”

This means that the examiner must provide a viable example demonstrating either:

• The apparatus as claimed is not an obvious apparatus for making the product and can be used to make a materially different product, or
• The product as claimed can be made by another materially different apparatus.

However, if the applicant proves or provides a convincing argument that the examiner’s suggested alternative is not workable, the burden shifts back to the examiner. In such cases, the examiner must either suggest another viable example or withdraw the restriction requirement.