Can species that are obvious over each other be subject to a restriction requirement?
Generally, species that are considered clearly unpatentable (obvious) over each other should not be subject to a restriction requirement. The MPEP provides specific guidance on this matter:
As stated in MPEP 808.01(a): “Election of species should not be required between claimed species that are considered clearly unpatentable (obvious) over each other. In making a requirement for restriction in an application claiming plural species, the examiner should group together species considered clearly unpatentable over each other.”
This guideline serves several purposes:
- It prevents unnecessary division of related subject matter.
- It reduces the burden on both the applicant and the examiner.
- It promotes efficient examination by allowing related species to be examined together.
However, it’s important to note that the determination of obviousness between species is made by the examiner based on the claims and prior art. If an applicant believes that a restriction requirement between species is improper due to obviousness, they can argue this point in a traverse of the restriction requirement.
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