MPEP § 806.05(g) — Apparatus and Product Made (Annotated Rules)
§806.05(g) Apparatus and Product Made
This page consolidates and annotates all enforceable requirements under MPEP § 806.05(g), 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.
Apparatus and Product Made
This section addresses Apparatus and Product Made. Contains: 1 requirement and 3 permissions.
Key Rules
35 U.S.C. 103 – Obviousness
An apparatus and a product made by the apparatus can be shown to be distinct inventions if either or both of the following can be shown: (A) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make another materially different product; or (B) that the product as claimed can be made by another materially different apparatus.
2. In bracket 3, use one or more of the following reasons:
- –the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make a different product such as……–,
- –the product can be made by a materially different apparatus such as……–.
2. In bracket 3, use one or more of the following reasons –the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make a different product such as……–,
The examiner must show by way of example either (A) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make another materially different product or (B) that the product as claimed can be made by another materially different apparatus.
Restriction Requirement (MPEP 802-803)
3. 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 apparatus and product made. The inventions in this relationship are distinct if either or both of the following can be shown: (1) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus can be used for making a materially different product or (2) that the product as claimed can be made by another materially different apparatus ( MPEP § 806.05(g) ). In this case [3] .
Citations
| Primary topic | Citation |
|---|---|
| – | MPEP § 806.05(g) |
| – | Form Paragraph § 8.19 |
| Restriction Requirement (MPEP 802-803) | Form Paragraph § 8.21 |
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(g) — Apparatus and Product Made
Source: USPTO806.05(g) Apparatus and Product Made [R-08.2012]
An apparatus and a product made by the apparatus can be shown to be distinct inventions if either or both of the following can be shown: (A) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make another materially different product; or (B) that the product as claimed can be made by another materially different apparatus.
Form paragraph 8.19 may be used for restriction requirements between apparatus and product made.
¶ 8.19 Apparatus and Product Made
Inventions [1] and [2] are related as apparatus and product made. The inventions in this relationship are distinct if either or both of the following can be shown: (1) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus can be used for making a materially different product or (2) that the product as claimed can be made by another materially different apparatus (MPEP § 806.05(g)). In this case [3].
Examiner Note:
- 1. This form paragraph is to be used when claims are presented to both the apparatus and product made (MPEP § 806.05(g)).
- 2. In bracket 3, use one or more of the following reasons:
- –the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make a different product such as……–,
- –the product can be made by a materially different apparatus such as……–.
- 3. Conclude restriction requirement with form paragraph 8.21.
The examiner must show by way of example either (A) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make another materially different product or (B) that the product as claimed can be made by another materially different apparatus.
The burden is on the examiner to provide an example, but the example need not be documented.
If applicant either proves or provides convincing argument that the alternative example suggested by the examiner is not workable, the burden is on the examiner to suggest another viable example or withdraw the restriction requirement.