How does the USPTO define “separately usable” in the context of subcombinations?
The USPTO defines “separately usable” in the context of subcombinations as follows:
According to MPEP 806.05(d), “The burden is on the examiner to provide an example to support the determination that the inventions are distinct, but the example need not be documented.” The MPEP further clarifies:
“A subcombination is separately usable if it has utility by itself or in combination with other things other than the other subcombinations. It is not necessary to show that a subcombination has utility other than in the disclosed combination.”
This means that a subcombination is considered separately usable if it can function on its own or be used in combination with elements other than the specific subcombinations described in the application. The examiner does not need to prove that the subcombination has a use outside of the disclosed combination, but rather that it could be used separately.
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