How does the USPTO determine if a subcombination has separate utility?
How does the USPTO determine if a subcombination has separate utility? The USPTO determines if a subcombination has separate utility by assessing whether it can be used independently of the combination. According to MPEP 806.05(a): “To support a requirement for restriction between combination and subcombination inventions, both two-way distinctness and reasons for insisting on restriction…
Read MoreWhat are the key criteria for establishing distinctness in subcombinations usable together?
The key criteria for establishing distinctness in subcombinations usable together are: The subcombinations must have separate utility The inventions must be shown to be separately usable There must be evidence of separate status in the art There must be evidence of different classification According to MPEP 806.05(d), “To support a requirement for restriction between subcombinations…
Read MoreWhat 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 MoreHow does the MPEP define “evidence of separate utility” for subcombinations?
How does the MPEP define “evidence of separate utility” for subcombinations? The MPEP 806.05(c) provides guidance on what constitutes evidence of separate utility for subcombinations: “The examiner must show, by way of example, that the subcombination has utility other than in the disclosed combination.” This means that the subcombination must have a use either by…
Read MoreHow 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:…
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