RESTRICTION PRACTICE III

RESTRICTION PRACTICE III

MPEP §806.5 pertains to combinations of embodiments such as an apparatus and method of utilizing the apparatus. Alternatively, it may pertain to a process and a method for practicing the process. The section also pertains to combinations and sub-combinations. (This arcane subject matter. I have borrowed heavily from the text of the MPEP.)

Where two or more related inventions are claimed, the principal question to be determined in connection with a requirement to restrict (or a rejection on the ground of double patenting –separately discussed) is whether or not the inventions as claimed are distinct. If they are distinct, restriction may be proper. If they are not distinct, restriction is never proper. If nondistinct inventions are claimed in separate applications or patents, double patenting must be held, except where the additional applications were filed consonant with a requirement to restrict.

Various pairs of related inventions are noted in the following sections. In applications claiming inventions in different statutory categories, only one-way distinctness is generally needed to support a restriction requirement. See MPEP § 806.05(c) (combination and sub-combination) and § 806.05(j) (related products or related processes) for examples of when a two-way test is required for distinctness.
806.05(c) Criteria of Distinctness Between Combination and Sub-combination

To support a requirement for restriction between combination and sub-combination inventions, both two-way distinctness and reasons for insisting on restriction are necessary, i.e., there would be a serious search burden if restriction were not required as evidenced by separate classification, status, or field of search.
The inventions are distinct if it can be shown that a combination as claimed:
• (A) does not require the particulars of the sub-combination as claimed for patentability (to show novelty and unobviousness), and
• (B) the sub-combination can be shown to have utility either by itself or in another materially different combination.

When these factors cannot be shown, such inventions are not distinct and restriction is not proper.

The following examples are included in the MPEP for general guidance.

I. SUB-COMBINATION ESSENTIAL TO COMBINATION
ABsp/Bsp No Restriction
Where a combination as claimed requires the details of a sub-combination as separately claimed, there is usually no evidence that combination ABsp is patentable without the details of sub-combination Bsp. The inventions are not distinct and a requirement for restriction must not be made or maintained, even if the sub-combination has separate utility. This situation can be diagrammed as combination ABsp (“sp” is an abbreviation for “specific”), and sub-combination Bsp. Thus the specific characteristics required by the sub-combination claim Bsp are also required by the combination claim.

II. SUBCOMBINATION NOT ESSENTIAL TO COMBINATION
A. ABbr/Bsp Restriction Proper
Where a combination as claimed does not require the details of the sub-combination as separately claimed and the sub-combination has separate utility, the inventions are distinct and restriction is proper if reasons exist for insisting upon the restriction, i.e., there would be a serious search burden if restriction were not required as evidenced by separate classification, status, or field of search.

This situation can be diagramed as combination ABbr (“br” is an abbreviation for “broad”), and sub-combination Bsp (“sp” is an abbreviation for “specific”). Bbr indicates that in the combination the sub-combination is broadly recited and that the specific characteristics required by the sub-combination claim Bsp are not required by the combination claim.

Since claims to both the sub-combination and combination are presented, the omission of details of the claimed sub-combination Bsp in the combination claim ABbr is evidence that the combination does not rely upon the specific limitations of the sub-combination for its patentability. If sub-combination Bsp has separate utility, the inventions are distinct and restriction is proper if reasons exist for insisting upon the restriction.

NOTE: In applications claiming plural inventions capable of being viewed as related in two ways, for example, as both combination-sub-combination and also as species under a claimed genus, both applicable criteria for distinctness must be demonstrated to support a restriction requirement.

NOTE: 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.

B. ABsp/ABbr/Bsp Restriction Proper
The presence of a claim to combination ABsp does not alter the propriety of a restriction requirement properly made between combination ABbr and sub-combination Bsp. Claim ABbr is an evidence claim which indicates that the combination does not rely upon the specific details of the sub-combination for its patentability. If a restriction requirement can be properly made between combination ABbr and sub-combination Bsp, any claim to combination ABsp would be grouped with combination ABbr.

If the combination claims are amended after a restriction requirement such that each combination, as claimed, requires all the limitations of the sub-combination as claimed, i.e., if the evidence claiming ABbr is deleted or amended to require Bsp, the restriction requirement between the combination and sub-combination should not be maintained.

If a claim to Bsp is determined to be allowable, any claims requiring Bsp, including any combination claims of the format ABsp, must be considered for rejoinder.

III. PLURAL COMBINATIONS REQUIRING A SUB-COMBINATION COMMON TO EACH COMBINATION
When an application includes a claim to a single sub-combination, and that sub-combination is required by plural claimed combinations that are properly restrictable, the sub-combination claim is a linking claim and will be examined with the elected combination (see MPEP § 809.03). See MPEP § 806.05(j).

806.05(d) Sub-combinations Usable Together
Two or more claimed sub-combinations, disclosed as usable together in a single combination, and which can be shown to be separately usable, are usually restrictable when the sub-combinations do not overlap in scope and are not obvious variants.
To support a restriction requirement where applicant separately claims plural sub-combinations usable together in a single combination and claims a combination that requires the particulars of at least one of said sub-combinations, both two-way distinctness and reasons for insisting on restriction are necessary. Each sub-combination is distinct from the combination as claimed if:
• (A) the combination does not require the particulars of the sub-combination as claimed for patentability (e.g., to show novelty and unobviousness), and
• (B) the sub-combination can be shown to have utility either by itself or in another materially different combination.
See MPEP § 806.05(c). Furthermore, restriction is only proper when there would be a serious burden if restriction were not required, as evidenced by separate classification, status, or field of search.
Where claims to two or more sub-combinations are presented along with a claim to a combination that includes the particulars of at least two sub-combinations, the presence of the claim to the second sub-combination is evidence that the details of the first sub-combination are not required for patentability (and vice versa). For example, if an application claims ABC/B/C wherein ABC is a combination claim and B and C are each sub-combinations that are properly restrictable from each other, the presence of a claim to C provides evidence that the details of B are not required for the patentability of combination ABC.
Upon determining that all claims directed to an elected combination invention are allowable, the examiner must reconsider the propriety of the restriction requirement. Where the combination is allowable in view of the patentability of at least one of the sub-combinations, the restriction requirement between the elected combination and patentable sub-combination(s) will be withdrawn; furthermore, any sub-combinations that were searched and determined to be allowable must also be rejoined. If a sub-combination is elected and determined to be allowable, nonelected claims requiring all the limitations of the allowable claim will be rejoined in accordance with MPEP § 821.04.

806.05(e) Process and Apparatus for Its Practice
Process and apparatus for its practice can be shown to be distinct inventions, if either or both of the following can be shown: (A) that the process as claimed can be practiced by another materially different apparatus or by hand; or (B) that the apparatus as claimed can be used to practice another materially different process.

806.05(f) Process of Making and Product Made
A process of making and a product made by the process can be shown to be distinct inventions if either or both of the following can be shown: (A) that the process as claimed is not an obvious process of making the product and the process as claimed can be used to make another materially different product; or (B) that the product as claimed can be made by another materially different process.
Allegations of different processes or products need not be documented.
A product defined by the process by which it can be made is still a product claim (In re Bridgeford, 357 F.2d 679, 149 USPQ 55 (CCPA 1966)) and can be restricted from the process if the examiner can demonstrate that the product as claimed can be made by another materially different process; defining the product in terms of a process by which it is made is nothing more than a permissible technique that applicant may use to define the invention.

If applicant convincingly traverses the requirement, the burden shifts to the examiner to document a viable alternative process or product, or withdraw the requirement.
806.05(g) Apparatus and Product Made

An apparatus and a product made by the apparatus can be shown to be distinct inventions if either or both of the following can be shown: (A) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make another materially different product; or (B) that the product as claimed can be made by another materially different apparatus.

806.05(h) Product and Process of Using
A product and a process of using the product can be shown to be distinct inventions if either or both of the following can be shown: (A) the process of using as claimed can be practiced with another materially different product; or (B) the product as claimed can be used in a materially different process.
The burden is on the examiner to provide an example, but the example need not be documented.
If the applicant either proves or provides a convincing argument that the alternative use suggested by the examiner cannot be accomplished, the burden is on the examiner to support a viable alternative use or withdraw the requirement.

806.05(i) Product, Process of Making, and Process of Using
37 C.F.R. 1.141 Different inventions in one national application.
• (b) Where claims to all three categories, product, process of making, and process of use, are included in a national application, a three way requirement for restriction can only be made where the process of making is distinct from the product. If the process of making and the product are not distinct, the process of using may be joined with the claims directed to the product and the process of making the product even though a showing of distinctness between the product and process of using the product can be made.
Where an application contains claims to a product, claims to a process specially adapted for (i.e., not patentably distinct from, as defined in MPEP § 806.05(f)) making the product, and claims to a process of using the product, applicant may be required to elect either (A) the product and process of making it; or (B) the process of using. If the examiner can not make a showing of distinctness between the process of using and the product (MPEP § 806.05(h)), restriction cannot be required.

806.05(j) Related Products; Related Processes
To support a requirement for restriction between two or more related product inventions, or between two or more related process inventions, both two-way distinctness and reasons for insisting on restriction are necessary, i.e., separate classification, status in the art, or field of search. See MPEP § 808.02. See MPEP § 806.05(c) for an explanation of the requirements to establish two-way distinctness as it applies to inventions in a combination/sub-combination relationship. For other related product inventions, or related process inventions, the inventions are distinct if
• (A) the inventions as claimed do not overlap in scope, i.e., are mutually exclusive;
• (B) the inventions as claimed are not obvious variants; and
• (C) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect. See MPEP § 802.01.
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.

As an example, an intermediate product and a final product can be shown to be distinct inventions if the intermediate and final products are mutually exclusive inventions (not overlapping in scope) that are not obvious variants, and the intermediate product as claimed is useful to make other than the final product as claimed. Typically, the intermediate loses its identity in the final product. See also MPEP § 806.05(d) for restricting between combinations disclosed as usable together. See MPEP § 809 – § 809.03 if a generic claim or claim linking multiple products or multiple processes is present.