How does an examiner establish a restriction requirement between apparatus and product claims?

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.

To establish a restriction requirement between apparatus and product claims, the examiner must show by way of example either:

• (A) That the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make another materially different product, or
• (B) That the product as claimed can be made by another materially different apparatus.

The MPEP 806.05(g) states:

“The examiner must show by way of example either (A) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make another materially different product or (B) that the product as claimed can be made by another materially different apparatus.”

The burden is on the examiner to provide an example, but the example need not be documented. Examiners typically use Form Paragraph 8.19 to communicate this restriction requirement.