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806.05(d) Subcombinations Usable Together - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
806.05(d) Subcombinations Usable Together
Two or more claimed subcombinations, disclosed as usable together in a single combination, and which can be shown to be separately usable, are usually distinct from each other.
Care should always be exercised in this situation to determine if the several subcombinations are generically claimed. See MPEP § 806.04(b).
Form paragraph 8.16 may be used in restriction requirements between subcombinations.
¶ 8.16 Subcombinations, Usable Together
Inventions [1] and [2] are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct from each other if they are shown to be separately usable. In the instant case invention [3] has separate utility such as [4]. See MPEP § 806.05(d).
Examiner Note
1. This form paragraph is to be used when claims are presented to subcombinations usable together ( MPEP § 806.05(d)).
2. In bracket 3, insert the appropriate group number or identify the invention.
3. In bracket 4, suggest utility other than with the other invention.
4. Conclude restriction requirement with one of form paragraphs 8.21.01 through 8.21.03.
Only one-way distinctness is required.
The examiner must show, by way of example, that one of the subcombinations has utility other than in the disclosed combination.
Care must be taken to determine if the subcombinations are generically claimed.
Where subcombinations as disclosed and claimed are both (a) species under a claimed genus and (b) related, then the question of restriction must be determined by both the practice applicable to election of species and the practice applicable to related inventions. If restriction is improper under either practice, it should not be required ( MPEP § 806.04(b)).
The burden is on the examiner to provide an example.
If applicant proves or provides an argument, supported by facts, that the other use, suggested by the examiner, cannot be accomplished or is not reasonable, the burden is on the examiner to document a viable alternative use or withdraw the requirement.
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