What is two-way distinctness in the context of subcombinations usable together?

Two-way distinctness is a crucial concept in determining whether subcombinations usable together can be restricted. According to MPEP 806.05(d): “To support a restriction requirement where applicant separately claims plural subcombinations usable together in a single combination and claims a combination that requires the particulars of at least one of said subcombinations, both two-way distinctness and…

Read More

What happens if subcombinations are both species under a claimed genus and related?

When subcombinations are both species under a claimed genus and related, the question of restriction becomes more complex. MPEP 806.05(d) provides guidance on this situation: “Where subcombinations as disclosed and claimed are both (a) species under a claimed genus and (b) related, then the question of restriction must be determined by both the practice applicable…

Read More

How does an examiner determine if there is a serious search and/or examination burden for subcombinations?

An examiner determines if there is a serious search and/or examination burden for subcombinations by considering several factors. According to MPEP 806.05(d): “A serious search burden can be evidenced by separate classification, status, or field of search and a serious examination burden can be evidenced by, for example, non-prior art issues relevant to one invention…

Read More

When can a restriction requirement be made between subcombinations?

A restriction requirement between subcombinations can be made when: The subcombinations do not overlap in scope They are not obvious variants At least one subcombination has separate utility There would be a serious search and/or examination burden if restriction were not required As stated in MPEP 806.05(d): “To support a restriction requirement where applicant separately…

Read More

What is Form Paragraph 8.16 used for in patent examination?

Form Paragraph 8.16 is used by patent examiners when making restriction requirements between subcombinations that are usable together. MPEP 806.05(d) provides the text of this form paragraph, which includes: A statement that the inventions are related as subcombinations disclosed as usable together in a single combination An explanation of how the subcombinations are distinct An…

Read More

How does an examiner determine if subcombinations have separate utility?

To determine if subcombinations have separate utility, the examiner must show, by way of example, that one of the subcombinations has utility other than in the disclosed combination. MPEP 806.05(d) states: “The examiner must show, by way of example, that one of the subcombinations has utility other than in the disclosed combination.” This process involves:…

Read More

What happens if a combination claim is found allowable in a restriction between subcombinations?

When a combination claim is found allowable in a restriction between subcombinations, the examiner must reconsider the propriety of the restriction requirement. MPEP 806.05(d) states: “Upon determining that all claims directed to an elected combination invention are allowable, the examiner must reconsider the propriety of the restriction requirement. Where the combination is allowable in view…

Read More