What are the reasons for insisting on restriction in combination-subcombination cases?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 10 Rules 5 Related FAQs 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. According to MPEP 806.05(c) , examiners must provide reasons for insisting on restriction in combination-subcombination cases. These reasons typically include: Separate classification: The combination and subcombination belong to different subclasses or different search areas. Separate status in the art: The inventions have attained recognition as separate subjects for inventive effort. Divergent fields of search: The search required for one invention is not required for the other. The MPEP states: “The examiner must show by appropriate explanation one of the following: (A) Separate classification thereof… (B) A separate status in the art… (C) A different field of search.” These reasons help justify the additional burden placed on the examiner if restriction is not required. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Restriction Requirement for Combination and Subcombination MPEP 806.05(c) Permitted Requirement for Distinctness Between Combination and Subcombination Inventions MPEP 806.05(c) Inventions Distinct When Combination Does Not Require Subcombination Details MPEP 806.05(c) Restriction to One Independent Invention Is Proper MPEP 806 Subcombination Broadly Recited in Combination Claim MPEP 806.05(c) Required Both Distinctness Criteria Must Be Met for Restriction Requirement MPEP 806.05(c) Required Conclusion of Restriction Requirement with Form Paragraph 8.21 MPEP 806.05(c) Examiner Must Document Separate Utility MPEP 806.05(c) Prohibited Restriction Requirement Withdrawal for Patentable Subcombinations MPEP 806.05(d) Required Inventions Not Distinct If Subcombination Has Separate Utility MPEP 806.05(c) Prohibited Other Related FAQs 5 FAQs Collapse W...