How does the examiner formulate a restriction requirement between product and process of making?
When formulating a restriction requirement between a product and a process of making, examiners are instructed to use specific form paragraphs as outlined in MPEP 806.05(f). The key form paragraph is 8.18, which states:
“[1] and [2] are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another materially different product or (2) that the product as claimed can be made by another materially different process (MPEP ยง 806.05(f)). In the instant case [3].”
The examiner must:
- Identify the product and process claims
- Explain how they are distinct by showing either:
- The process can make a different product, or
- The product can be made by a different process
- Provide specific examples in bracket [3], such as “the process as claimed can be used to make a materially different product such as…” or “the product as claimed can be made by a materially different process such as…”
This structured approach ensures clarity and consistency in restriction requirements between product and process claims.
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