Can a subcombination be claimed in a dependent claim of a combination?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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 not in itself preclude a subcombination from being held to be nonelected or nonallowable. The criterion of distinctness is the same regardless of the manner in which the inventions are claimed.”

This means that:

• A subcombination can be included in a dependent claim of a combination.
• The presence of such a claim doesn’t automatically prevent a restriction requirement.
• The examiner will still apply the same criteria for distinctness, regardless of how the inventions are claimed.

For example, a claim for a computer (combination) might have a dependent claim specifying a particular type of processor (subcombination). The examiner would still assess whether the computer’s patentability relies on that specific processor and if the processor has separate utility.