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806.05(e) Process and Apparatus for Its Practice - Distinctness - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
806.05(e) Process and Apparatus for Its Practice - Distinctness
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).
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 and materially different process.
If the apparatus claims include a claim to "means" for practicing the process, the claim is a linking claim and must be examined with the elected invention. If it is ultimately allowed, rejoinder is required. See MPEP § 809.04.
Form paragraph 8.17 may be used to make restriction requirements between process and apparatus.
¶ 8.17 Process and Apparatus
Inventions [1] and [2] are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. ( MPEP § 806.05(e)). In this case [3].
Examiner Note
1. This form paragraph is to be used when claims are presented to both a process and apparatus for its practice ( MPEP § 806.05(e)).
2. In bracket 3, use one or more of the following reasons:
--the process as claimed can be practiced by another and materially different apparatus such as ......--,
--the process as claimed can be practiced by hand--,
--the apparatus as claimed can be used to practice another and materially different process such as ......--.
3. Conclude restriction requirement with one of form paragraphs 8.21.01 through 8.21.03.
The burden is on the examiner to provide reasonable examples that recite material differences.
If the apparatus claims include a claim to "means" for practicing the process, this claim is a linking claim (except for the presence of this claim restriction between apparatus and process claims would be proper). The linking claim must be examined with the elected invention, but only to the extent necessary to determine if the linking claim is unpatentable. If the linking claim is unpatentable, restriction is proper.
It should be noted that a claim such as, "An apparatus for the practice of the process of claim 1, comprising ...." and then the claim continues with purely apparatus limitations, is not a linking claim. This is merely a preamble similar to a statement of intended use and should be treated as any preamble.
If applicant proves or provides convincing argument that there is no material difference or in the case of a process that cannot be performed by hand (if examiner so argued), the burden is on the examiner to document another materially different process or apparatus or withdraw the requirement.
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