How does an examiner determine if there is a serious search and/or examination burden for subcombinations?
An examiner determines if there is a serious search and/or examination burden for subcombinations by considering several factors. According to MPEP 806.05(d):
“A serious search burden can be evidenced by separate classification, status, or field of search and a serious examination burden can be evidenced by, for example, non-prior art issues relevant to one invention that are not relevant to the other invention. See MPEP ยง 808.02.”
This means the examiner must provide specific reasons why searching and examining all claimed inventions would be burdensome, such as:
- The inventions have acquired separate status in the art due to their recognized divergent subject matter
- The inventions require different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries)
- The prior art applicable to one invention would not likely be applicable to another invention
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