How does the USPTO count second or subsequent First Actions on the Merits (FAOM)?
The USPTO has a specific system for counting second or subsequent First Actions on the Merits (FAOM). According to MPEP 1705: “A second/subsequent FAOM usually occurs when the first action is a mailed restriction/election action and the second action is an action on the merits. The USPTO’s automated data management system will automatically determine if…
Read MoreWhat 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 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 MoreWhat happens if an applicant traverses a restriction requirement between a process and a product?
If an applicant convincingly traverses a restriction requirement between a process and a product, the burden shifts to the examiner. According to MPEP 806.05(f): “If applicant convincingly traverses the requirement, the burden shifts to the examiner to document a viable alternative process or product, or withdraw the requirement.” This means that if the applicant provides…
Read MoreWhat is a traverse in response to a restriction requirement?
A traverse is a request for reconsideration of a requirement to restrict that must include a written statement of the reasons for traverse. According to MPEP 818.01, a traverse must “distinctly and specifically point out the supposed errors upon which the applicant relies for concluding that the requirement is in error.” The MPEP states: “A…
Read MoreWhat are the conditions for a three-way restriction requirement in a patent application?
A three-way restriction requirement in a patent application can only be made under specific conditions. According to MPEP 806.05(i): “Where claims to all three categories, product, process of making, and process of use, are included in a national application, a three way requirement for restriction can only be made where the process of making is…
Read MoreWhat is the purpose of submitting certain double patenting rejections to the Technology Center Director?
The purpose of submitting certain double patenting rejections to the Technology Center Director is to promote uniform practice in the examination process. Specifically, “every Office action containing a rejection on the ground of nonstatutory double patenting which relies on the parent application to reject the claims in a divisional application where the divisional application was…
Read MoreCan a subcombination be claimed in a dependent claim of a combination?
Can a subcombination be claimed in a dependent claim of a combination? Yes, a subcombination can be claimed in a dependent claim of a combination. However, this doesn’t necessarily prevent a restriction requirement. The MPEP 806.05(a) provides guidance on this situation: “The presence of a combination claim in an application, whether allowed or rejected, does…
Read MoreWhat are the two subcombination-combination situations in patent applications?
What are the two subcombination-combination situations in patent applications? According to MPEP 806.05(c), there are two subcombination-combination situations in patent applications: Subcombination essential to combination: The combination requires the details of the subcombination for patentability. Subcombination not essential to combination: The combination does not require the details of the subcombination for patentability. The MPEP states:…
Read MoreWhat is the statutory period for replying to a written restriction requirement in a patent application?
The statutory period for replying to a written restriction requirement in a patent application is specified in MPEP 810: “A 2-month shortened statutory period will be set for reply when a written restriction requirement is made without an action on the merits. This period may be extended under the provisions of 37 CFR 1.136(a).” Key…
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