What is the burden of proof for establishing distinctness in process and product claims?
The burden of proof for establishing distinctness in process and product claims lies with the examiner. According to MPEP 806.05(f): “Allegations of different processes or products need not be documented.” This means that: The examiner must provide a logical reasoning for distinctness. The examiner is not required to provide documentary evidence. Hypothetical examples can be…
Read MoreWhat is the “between the products” requirement for rejoinder?
What is the “between the products” requirement for rejoinder? The “between the products” requirement for rejoinder refers to the condition where all product claims are found allowable, and the process claims must be commensurate in scope with the allowed product claims. This is explicitly stated in MPEP 821.04(a): “Where all product claims are found allowable,…
Read MoreHow does 37 CFR 1.141(b) relate to restriction requirements in patent applications?
37 CFR 1.141(b) is a regulation that specifically addresses restriction requirements in patent applications containing claims to multiple categories of inventions. The MPEP 806.05(i) references this regulation: “37 CFR 1.141 Different inventions in one national application. ***** (b) Where claims to all three categories, product, process of making, and process of use, are included in…
Read More