What 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 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

What is the examiner’s burden of proof for subcombinations usable together?

The examiner’s burden of proof for subcombinations usable together is outlined in MPEP 806.05(d): “The burden is on the examiner to provide an example to support the determination that the inventions are distinct, but the example need not be documented.” This means that the examiner must: Provide an example showing how the subcombinations are distinct…

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