What 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 examiner’s responsibility regarding canceled non-elected claims?
Regarding canceled non-elected claims, the examiner has the following responsibilities: Ensure that canceled claims are not included in the listing of claims. Verify that the claim status identifiers correctly indicate canceled claims. Do not examine or comment on the merits of canceled claims. MPEP 821 states: “Claims which are withdrawn or otherwise not elected are…
Read MoreWhat is the examiner’s responsibility regarding completeness of actions?
The examiner’s responsibility regarding completeness of actions is outlined in 37 CFR 1.104(b), which states: The examiner’s action will be complete as to all matters, except that in appropriate circumstances, such as misjoinder of invention, fundamental defects in the application, and the like, the action of the examiner may be limited to such matters before…
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