MPEP § 806.05(e) — Process and Apparatus for Its Practice (Annotated Rules)
§806.05(e) Process and Apparatus for Its Practice
This page consolidates and annotates all enforceable requirements under MPEP § 806.05(e), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Process and Apparatus for Its Practice
This section addresses Process and Apparatus for Its Practice.
Key Rules
Restriction Requirement (MPEP 802-803)
4. Conclude restriction requirement with form paragraph 8.21.
Examiner Form Paragraphs
Examiner form paragraphs are standard language that you might see in an Office Action or communication from the USPTO. Examiners have latitude to change the form paragraphs, but you will often see this exact language.
Inventions [1] and [2] are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another materially different process. ( MPEP § 806.05(e) ). In this case [3] .
- Distinct Inventions Requirement for Process and Apparatus
- Reasons for Bracket 3 Must Be Specified
- Apparatus Can Practice Alternative Process
- Process Can Be Practiced by Another Materially Different Device
- Process Can Be Hand-Practiced
- Burden on Examiner to Prove Material Difference
- Process Must Be Hand-Performed Without Apparatus
Citations
| Primary topic | Citation |
|---|---|
| – | MPEP § 806.05(e) |
| – | Form Paragraph § 8.17 |
| Restriction Requirement (MPEP 802-803) | Form Paragraph § 8.21 |
| – | Form Paragraph § 8.21.04 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 806.05(e) — Process and Apparatus for Its Practice
Source: USPTO806.05(e) Process and Apparatus for Its Practice [R-08.2012]
Process and apparatus for its practice can be shown to be distinct inventions, if either or both of the following can be shown: (A) that the process as claimed can be practiced by another materially different apparatus or by hand; or (B) that the apparatus as claimed can be used to practice another materially different process.
Form paragraph 8.17 may be used to make restriction requirements between process and apparatus.
¶ 8.17 Process and Apparatus
Inventions [1] and [2] are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another materially different process. (MPEP § 806.05(e)). In this case [3].
Examiner Note:
- 1. This form paragraph is to be used when claims are presented to both a process and apparatus for its practice (MPEP § 806.05(e)).
- 2. In bracket 3, use one or more of the following
reasons:
- –the process as claimed can be practiced by another materially different apparatus such as……–,
- –the process as claimed can be practiced by hand–,
- –the apparatus as claimed can be used to practice another materially different process such as……–.
- 3. A process can be practiced by hand if it can be performed without using any apparatus.
- 4. Conclude restriction requirement with form paragraph 8.21.
- 5. All restriction requirements between a process and an apparatus (or product) for practicing the process should be followed by form paragraph 8.21.04 to notify the applicant that if an apparatus claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable apparatus may be rejoined.
The burden is on the examiner to provide reasonable examples that recite material differences.
If applicant proves or provides convincing argument that there is no material difference or that a process cannot be performed by hand (if examiner so argued), the burden is on the examiner to document another materially different process or apparatus or withdraw the requirement.