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806.05(c) Criteria of Distinctness for Combination, Subcombination, or Element of a Combination - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
806.05(c) Criteria of Distinctness for Combination, Subcombination, or Element of a Combination
In order to establish that combination and subcombination inventions are distinct, two-way distinctness must be demonstrated.
To support a requirement for restriction, both two-way distinctness and reasons for insisting on restriction are necessary, i.e., separate classification, status, or field of search. See MPEP § 808.02.
The inventions are distinct if it can be shown that a combination as claimed:
(A) does not require the particulars of the subcombination as claimed for patentability (to show novelty and unobviousness), and
(B) the subcombination can be shown to have utility either by itself or in other and different relations.
When these factors cannot be shown, such inventions are not distinct.
The following examples are included for general guidance.
I. SUBCOMBINATION NOT ESSENTIAL TO COMBINATION
AB
br
/Bsp
Restriction ProperWhere a combination as claimed does not set forth the details of the subcombination as separately claimed and the subcombination has separate utility, the inventions are distinct and restriction is proper if reasons exist for insisting upon the restriction; i.e., separate classification, status, or field of search.
This situation can be diagramed as combination AB
br
("br" is an abbreviation for "broad"), and subcombination Bsp
("sp" is an abbreviation for "specific"). Bbr
indicates that in the combination the subcombination is broadly recited and that the specific characteristics set forth in the subcombination claim Bsp
are not set forth in the combination claim.Since claims to both the subcombination and combination are presented and assumed to be patentable, the omission of details of the claimed subcombination B
sp
in the combination claim ABbr
is evidence that the patentability of the combination does not rely on the details of the specific subcombination.II. SUBCOMBINATION ESSENTIAL TO COMBINATION
AB
sp
/Bsp
No RestrictionIf there is no evidence that combination AB
sp
is patentable without the details of Bsp
, restriction should not be required. Where the relationship between the claims is such that the separately claimed subcombination Bsp
constitutes the essential distinguishing feature of the combination ABsp
as claimed, the inventions are not distinct and a requirement for restriction must not be made, even though the subcombination has separate utility.III. SOME COMBINATION CLAIMS RECITE SPECIFIC FEATURES OF THE SUB-COMBINATION BUT OTHER COMBINATION CLAIMS GIVE EVIDENCE THAT THE SUBCOMBINATION IS NOT ESSENTIAL TO THE COMBINATION.
AB
sp
/ABbr
(Evidence Claim)/Bsp
Restriction ProperClaim AB
br
is an evidence claim which indicates that the combination does not rely upon the specific details of the subcombination for its patentability. If claim ABbr
is subsequently found to be unallowable, the question of rejoinder of the inventions restricted must be considered and the letter to the applicant should so state. Therefore, where the combination evidence claim ABbr
does not set forth the details of the subcombination Bsp
and the subcombination Bsp
has separate utility, the inventions are distinct and restriction is proper if reasons exist for insisting upon the restriction.In applications claiming plural inventions capable of being viewed as related in two ways, for example, as both combination-subcombination and also as different statutory categories, both applicable criteria for distinctness must be demonstrated to support a restriction requirement. See also MPEP § 806.04(b).
Form paragraph 8.15 may be used in combination-subcombination restriction requirements.
¶ 8.15 Combination-Subcombination
Inventions [1] and [2] are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations ( MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because [3]. The subcombination has separate utility such as [4].
Examiner Note
1. This form paragraph is to be used when claims are presented to both combination(s) and subcombination(s) ( MPEP § 806.05(c)).
2. In situations involving evidence claims, see MPEP § 806.05(c), example 3, and explain in bracket 3.
3. In bracket 4, suggest utility other than used in the combination.
4. Conclude restriction requirement with one of form paragraphs 8.21.01 through 8.21.03.
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 other utility, suggested by the examiner, cannot be accomplished, the burden shifts to the examiner to document a viable separate utility or withdraw the requirement.
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