How does an examiner establish a restriction requirement between apparatus and product claims?
To establish a restriction requirement between apparatus and product claims, 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…
Read MoreWhat is the burden of proof for an examiner in establishing a restriction requirement between apparatus and product claims?
In establishing a restriction requirement between apparatus and product claims, the burden of proof lies with the examiner. According to MPEP 806.05(g): “The burden is on the examiner to provide an example, but the example need not be documented.” This means that the examiner must provide a viable example demonstrating either: The apparatus as claimed…
Read MoreWhat are the criteria for establishing distinctness between a process and an apparatus for its practice?
The criteria for establishing distinctness between a process and an apparatus for its practice are outlined in MPEP 806.05(e): The apparatus as claimed can be used to practice another and materially different process; or The process as claimed can be practiced by another and materially different apparatus or by hand. The examiner must provide reasons…
Read MoreHow can an applicant challenge a restriction requirement between apparatus and product claims?
An applicant can challenge a restriction requirement between apparatus and product claims by providing evidence or convincing arguments that the examiner’s suggested alternative is not workable. The MPEP 806.05(g) states: “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…
Read MoreWhat is the burden of proof in restriction requirements for process and apparatus claims?
In restriction requirements for process and apparatus claims, the burden of proof initially lies with the patent examiner. According to MPEP § 806.05(e): “The burden is on the examiner to provide reasonable examples that recite material differences.” This means the examiner must: Provide specific examples of how the process can be practiced by another materially…
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