What is the burden of proof for examiners in establishing distinctness?
In establishing distinctness between related inventions, examiners have the burden of providing an example to support their determination. However, this example does not need to be documented. The MPEP provides guidance on this burden of proof:
MPEP § 806.05(j) states: “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. If applicant either proves or provides convincing evidence that the 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 approach ensures that examiners have a reasonable basis for their distinctness determination while allowing applicants to challenge the determination if they can prove or provide convincing evidence that the examiner’s example is not workable.
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