How does the USPTO handle applications with plural inventions related as both combination-subcombination and species?
When an application contains plural inventions that can be viewed as related in two ways – as combination-subcombination and as species under a claimed genus – the USPTO requires that both applicable criteria for distinctness be demonstrated to support a restriction requirement. The MPEP states: “In applications claiming plural inventions capable of being viewed as…
Read MoreHow is two-way distinctness determined for combination-subcombination inventions?
How is two-way distinctness determined for combination-subcombination inventions? Two-way distinctness for combination-subcombination inventions is determined by evaluating the inventions in both directions. According to MPEP 806.05(c): “The combination as claimed does not require the particulars of the subcombination as claimed for patentability” (to show that the combination does not rely on the specific details of…
Read MoreHow does the examiner determine if there is a serious search burden in combination-subcombination cases?
How does the examiner determine if there is a serious search burden in combination-subcombination cases? In combination-subcombination cases, the examiner must demonstrate a serious search burden to justify a restriction requirement. According to MPEP 806.05(a): “To support a requirement for restriction between combination and subcombination inventions, both two-way distinctness and reasons for insisting on restriction…
Read MoreWhat are the reasons for insisting on restriction in combination-subcombination cases?
What are the reasons for insisting on restriction in combination-subcombination cases? According to MPEP 806.05(c), examiners must provide reasons for insisting on restriction in combination-subcombination cases. These reasons typically include: Separate classification: The combination and subcombination belong to different subclasses or different search areas. Separate status in the art: The inventions have attained recognition as…
Read MoreWhat is the examiner’s responsibility regarding separate utility in combination-subcombination restrictions?
In combination-subcombination restrictions, the examiner has the responsibility to suggest an example of separate utility for the subcombination. The MPEP states: “The burden is on the examiner to suggest an example of separate utility. If applicant proves or provides an argument, supported by facts, that the utility suggested by the examiner cannot be accomplished, the…
Read MoreWhat is the significance of an ‘evidence claim’ in combination-subcombination restriction requirements?
An ‘evidence claim’ in combination-subcombination restriction requirements is a claim that demonstrates the combination does not rely on the specific details of the subcombination for patentability. The MPEP explains: “Claim ABbr is an evidence claim which indicates that the combination does not rely upon the specific details of the subcombination for its patentability.” Here, ‘br’…
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