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806.05(f) Process of Making and Product Made - Distinctness - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
806.05(f) Process of Making and Product Made - Distinctness
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 other and different products; or (B) that the product as claimed can be made by another and 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.
Form paragraph 8.18 may be used in restriction requirements between product and process of making.
¶ 8.18 Product and Process of Making
Inventions [1] and [2] are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make other and materially different product or (2) that the product as claimed can be made by another and materially different process ( MPEP § 806.05(f)). In the instant case [3].
Examiner Note
1. This form paragraph is to be used when claims are presented to both a product and the process of making the product ( MPEP § 806.05(f)).
2. In bracket 3, use one or more of the following reasons:
--the process as claimed can be used to make a materially different product such as ......--,
--the product as claimed can be made by a materially different process such as ......--.
3. Conclude restriction requirement with one of form paragraphs 8.21.01 through 8.21.03.
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