How can an applicant overcome a restriction requirement between a product and its process of making or using?
An applicant can overcome a restriction requirement between a product and its process of making or using in several ways:
- Traverse the requirement: Argue that the restriction is improper by showing that the product cannot be made by a materially different process or used in a materially different way.
- Amend the claims: Modify the claims to show that the product and process are not distinct or that they have a special technical relationship.
- File a divisional application: Pursue the restricted claims in a separate application while maintaining the right to rejoin them later.
- Request rejoinder: If the product claims are found allowable, request that the process claims be rejoined and examined for patentability.
According to MPEP 806.05(i):
“The examiner must show “distinct inventions” to support a restriction requirement.”
If the applicant can demonstrate that the inventions are not distinct or that examining them together would not be a serious burden, they may be able to overcome the restriction.
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