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806.05(h) Product and Process of Using - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting


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.

Form paragraph 8.20 may be used in restriction requirements between the product and method of using.


¶ 8.20 Product and Process of Using

Inventions [1] and [2] are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product ( MPEP § 806.05(h)). In the instant case [3].

Examiner Note

1. This form paragraph is to be used when claims are presented to both the product and process of using the product ( MPEP § 806.05(h)).

2. In bracket 3, use one or more of the following reasons:

--the process as claimed can be practiced with another materially different product such as ......--,

--the product as claimed can be used in 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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