What is the examiner’s responsibility regarding separate utility in combination-subcombination restrictions?

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.

In combination-subcombination restrictions, the examiner has the responsibility to suggest an example of separate utility for the subcombination. The MPEP states:

“The burden is on the examiner to suggest an example of separate utility. If applicant proves or provides an argument, supported by facts, that the utility suggested by the examiner cannot be accomplished, the burden shifts to the examiner to document a viable separate utility or withdraw the requirement.”

This means that the examiner must provide a plausible example of how the subcombination could be used separately from the combination. If the applicant successfully challenges this suggestion, the examiner must either provide a different, viable example of separate utility or withdraw the restriction requirement. This process ensures that restriction requirements are well-founded and that applicants have a fair opportunity to challenge them.