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806.05(i) Product, Process of Making, and Process of Using - Product Claim Not Allowable - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
806.05(i) Product, Process of Making, and Process of Using - Product Claim Not Allowable
37 CFR 1.141 Different inventions in one national application.
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(b) Where claims to all three categories, product, process of making, and process of use, are included in a national application, a three way requirement for restriction can only be made where the process of making is distinct from the product. If the process of making and the product are not distinct, the process of using may be joined with the claims directed to the product and the process of making the product even though a showing of distinctness between the product and process of using the product can be made.
Where an application contains claims to a product, claims to a process specially adapted for (i.e., not patentably distinct from, as defined in MPEP § 806.05(f)) making the product, and claims to a process of using the product, and the product claims are not allowable (i.e., not novel and nonobvious), restriction is proper between the process of making and the process of using. In this instance, applicant may be required to elect either (A) the product and process of making it; or (B) the process of using. Unless the examiner can make a showing of distinctness between the process of using and the product ( MPEP § 806.05(h)), the product must also be joined with the process of using in grouping (B).
Where the product claims are allowable (i.e., novel and nonobvious), restriction may be required only where the process of making and the product made are distinct ( MPEP § 806.05(f)); otherwise, the process of using must be joined with the process of making and product made, even if a showing of distinctness can be made between the product and process of using ( MPEP § 806.05(h)).
Determination of patentability of the product need not be made prior to making a requirement for restriction unless the requirement is based on a determination that the product claims are not allowable.
Form paragraph 8.20.01 may be used in product, process of making and process of using situations where the product is not allowable.
¶ 8.20.01 Product, Process of Making and Process of Using-Product Not Allowable
Inventions [1] and [2] are related as process of making and process of using the product. The use as claimed cannot be practiced with a materially different product. Since the product is not allowable, restriction is proper between said method of making and method of using. The product claim will be examined along with the elected invention ( MPEP § 806.05(i)).
Examiner Note
This form paragraph is to be used when claims are presented to the product, process of making and process of using where the product claim(s) are not allowable ( MPEP § 806.05(i)).
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