How does the examiner formulate a restriction requirement between product and process of making?
When formulating a restriction requirement between a product and a process of making, examiners are instructed to use specific form paragraphs as outlined in MPEP 806.05(f). The key form paragraph is 8.18, which states:
“[1] and [2] are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another materially different product or (2) that the product as claimed can be made by another materially different process (MPEP § 806.05(f)). In the instant case [3].”
The examiner must:
- Identify the product and process claims
- Explain how they are distinct by showing either:
- The process can make a different product, or
- The product can be made by a different process
- Provide specific examples in bracket [3], such as “the process as claimed can be used to make a materially different product such as…” or “the product as claimed can be made by a materially different process such as…”
This structured approach ensures clarity and consistency in restriction requirements between product and process claims.
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