How does the examiner determine if there is a serious search burden in combination-subcombination cases?
How does the examiner determine if there is a serious search burden in combination-subcombination cases?
In combination-subcombination cases, the examiner must demonstrate a serious search burden to justify a restriction requirement. According to MPEP 806.05(a):
“To support a requirement for restriction between combination and subcombination inventions, both two-way distinctness and reasons for insisting on restriction are necessary, i.e., there would be a serious search burden if restriction were not required as evidenced by separate classification, status, or field of search.”
The examiner determines a serious search burden by considering:
- Separate classification: The combination and subcombination are classified in different areas.
- Different status: They may have different statuses in the art (e.g., one might be an emerging technology while the other is well-established).
- Distinct field of search: Searching for one invention doesn’t necessarily cover the other, requiring additional search strategies or queries.
For example, a search for a specific type of engine (subcombination) might involve different classifications and search strategies than a search for a vehicle (combination) incorporating that engine.
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