When is a Patentability Report not appropriate in patent examination?

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.

According to MPEP 705.01(e), Patentability Reports are not appropriate in several situations:

• Claims with the same character but different scope:
  

  Where claims are directed to the same character of invention but differ in scope only, prosecution by Patentability Report is never proper.

• Manufacturing process and product claims:
  

  Where the claims are related as a manufacturing process and a product defined by the process of manufacture. The examiner having jurisdiction of the process can usually give a complete, adequate examination in less total examiner time than would be consumed by the use of a Patentability Report.

• Product and simple process claims:
  

  Where the claims are related as product and a process which involves merely the fact that a product having certain characteristics is made. The examiner having jurisdiction of the product can usually make a complete and adequate examination.

• Combination and subcombination claims:
  

  Where the claims are related as a combination distinguished solely by the characteristics of a subcombination and such subcombination, per se. The examiner having jurisdiction of the subcombination can usually make a complete and adequate examination.