When can a restriction requirement be made between subcombinations?

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.

A restriction requirement between subcombinations can be made when:

• The subcombinations do not overlap in scope
• They are not obvious variants
• At least one subcombination has separate utility
• There would be a serious search and/or examination burden if restriction were not required

As stated in MPEP 806.05(d): “To support a restriction requirement where applicant separately claims plural subcombinations usable together in a single combination and claims a combination that requires the particulars of at least one of said subcombinations, both two-way distinctness and reasons for insisting on restriction are necessary.”

The examiner must show that each subcombination is distinct from the combination and has utility either by itself or in another materially different combination.