When is a Patentability Report not appropriate in patent examination?
According to MPEP 705.01(e), Patentability Reports are not appropriate in several situations:
- Claims with the same character but different scope:
Where claims are directed to the same character of invention but differ in scope only, prosecution by Patentability Report is never proper.
- Manufacturing process and product claims:
Where the claims are related as a manufacturing process and a product defined by the process of manufacture. The examiner having jurisdiction of the process can usually give a complete, adequate examination in less total examiner time than would be consumed by the use of a Patentability Report.
- Product and simple process claims:
Where the claims are related as product and a process which involves merely the fact that a product having certain characteristics is made. The examiner having jurisdiction of the product can usually make a complete and adequate examination.
- Combination and subcombination claims:
Where the claims are related as a combination distinguished solely by the characteristics of a subcombination and such subcombination, per se. The examiner having jurisdiction of the subcombination can usually make a complete and adequate examination.
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