How does the USPTO determine if a product can be made by a materially different process?
How does the USPTO determine if a product can be made by a materially different process?
The USPTO determines if a product can be made by a materially different process by considering alternative methods of production that result in the same end product but differ significantly in their approach. According to MPEP 806.05(f):
“The burden is on the examiner to provide an example, but the example need not be documented. If the applicant either proves or provides convincing evidence that the alternative example suggested by the examiner is not workable, the burden is on the examiner to suggest another viable example or withdraw the restriction requirement.”
This means that the examiner must provide a reasonable alternative process, but it doesn’t need to be a documented one. The applicant can challenge this by proving the suggested alternative is not viable.
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