What is required when traversing a restriction requirement?
When traversing a restriction requirement, an applicant must still make a provisional election. This is explicitly stated in MPEP 818.01(b): “As noted in the second sentence of 37 CFR 1.143, a provisional election must be made even if the requirement is traversed.” This means that even if you disagree with the restriction requirement and plan…
Read MoreWhat is a proper traverse of a restriction requirement with linking claims?
A proper traverse of a restriction requirement with linking claims must include a written statement that specifically points out the supposed errors in the requirement. The Manual of Patent Examining Procedure (MPEP) Section 818.01(d) states: “Regardless of the presence of a linking claim, a proper traverse must include a written statement of the reasons for…
Read MoreWhat is the prohibition of nonstatutory double patenting rejections under 35 U.S.C. 121?
The prohibition of nonstatutory double patenting rejections under 35 U.S.C. 121 is a legal provision that prevents the use of a patent issuing from an application with a restriction requirement as a reference against a divisional application in a nonstatutory double patenting rejection. This protection applies only when: The Office has made a requirement for…
Read MoreHow are product, process of making, and process of using inventions related in patent applications?
In patent applications, the relationship between product, process of making, and process of using inventions is complex and governed by specific rules for restriction requirements. MPEP 806.05(i) cites 37 CFR 1.141(b): Where claims to all three categories, product, process of making, and process of use, are included in a national application, a three way requirement…
Read MoreWhat is the distinction between a product and a process of using the product in patent law?
In patent law, a product and a process of using the product can be considered distinct inventions under certain conditions. According to MPEP 806.05(h), these inventions can be shown to be distinct if either: (A) the process of using as claimed can be practiced with another materially different product; or (B) the product as claimed…
Read MoreHow is a product claim defined by a process treated in patent examination?
A product claim defined by the process by which it is made is still considered a product claim in patent examination. This principle is based on the decision in In re Bridgeford, as cited in MPEP 806.05(f): “A product defined by the process by which it can be made is still a product claim (…
Read MoreWhat is the distinction between a process of making and a product made?
A process of making and a product made by the process can be shown to be distinct inventions if either or both of the following can be demonstrated: (A) The process as claimed is not an obvious process of making the product and can be used to make another materially different product, or (B) The…
Read MoreWhat is the “process of making and process of using” restriction requirement?
The “process of making and process of using” restriction requirement is a type of restriction that can be made between claims in a patent application. According to MPEP 806.05(i), this restriction can be applied when: The process of making as claimed is distinct from the process of using, AND The product can be made by…
Read MoreCan a process claim be restricted from an apparatus claim if it can be practiced by hand?
Yes, according to MPEP 806.05(e), a process claim can be restricted from an apparatus claim if it can be practiced by hand. The MPEP states: “A process can be shown to be distinct from an apparatus for practicing the process if: … (2) the process as claimed can be practiced by another and materially different…
Read MoreHow are process and apparatus inventions considered distinct for restriction purposes?
Process and apparatus inventions can be shown to be distinct for restriction purposes if either of the following can be demonstrated: The process as claimed can be practiced by another materially different apparatus or by hand, or The apparatus as claimed can be used to practice another materially different process. MPEP 806.05(e) states: Process and…
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