What is the burden of proof in restriction requirements for process and apparatus claims?
In restriction requirements for process and apparatus claims, the burden of proof initially lies with the patent examiner. According to MPEP § 806.05(e):
“The burden is on the examiner to provide reasonable examples that recite material differences.”
This means the examiner must:
- Provide specific examples of how the process can be practiced by another materially different apparatus or by hand
- Or demonstrate how the apparatus can be used to practice another materially different process
However, the burden can shift to the applicant if they challenge the examiner’s assertion. The MPEP states:
“If applicant proves or provides convincing argument that there is no material difference or that a process cannot be performed by hand (if examiner so argued), the burden is on the examiner to document another materially different process or apparatus or withdraw the requirement.”
This balanced approach ensures that restriction requirements are justified and provides applicants with the opportunity to challenge unsupported restrictions.
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