How does an examiner determine if subcombinations have separate utility?
To determine if subcombinations have separate utility, the examiner must show, by way of example, that one of the subcombinations has utility other than in the disclosed combination. MPEP 806.05(d) states:
“The examiner must show, by way of example, that one of the subcombinations has utility other than in the disclosed combination.”
This process involves:
- Identifying a potential use for the subcombination outside of the claimed combination
- Ensuring the suggested use is reasonable and can be accomplished
- Considering whether the subcombinations are generically claimed
If the applicant provides an argument, supported by facts, that the examiner’s suggested use cannot be accomplished or is not reasonable, the burden shifts back to the examiner. As MPEP 806.05(d) notes:
“If applicant proves or provides an argument, supported by facts, that the other use, suggested by the examiner, cannot be accomplished or is not reasonable, the burden is on the examiner to document a viable alternative use or withdraw the requirement.”
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