806.05(g) Apparatus and Product Made [R-08.2012]
An apparatus and a product made by the apparatus can be shown to be distinct inventions if either or both of the following can be shown: (A) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make another materially different product; or (B) that the product as claimed can be made by another materially different apparatus.
Form paragraph 8.19 may be used for restriction requirements between apparatus and product made.
¶ 8.19 Apparatus and Product Made
Inventions [1] and [2] are related as apparatus and product made. The inventions in this relationship are distinct if either or both of the following can be shown: (1) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus can be used for making a materially different product or (2) that the product as claimed can be made by another materially different apparatus (MPEP § 806.05(g)). In this case [3].
Examiner Note:
- 1. This form paragraph is to be used when claims are presented to both the apparatus and product made (MPEP § 806.05(g)).
- 2. In bracket 3, use one or more of the following reasons:
- –the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make a different product such as……–,
- –the product can be made by a materially different apparatus such as……–.
- 3. Conclude restriction requirement with form paragraph 8.21.
The examiner must show by way of example either (A) that the apparatus as claimed is not an obvious apparatus for making the product and the apparatus as claimed can be used to make another materially different product or (B) that the product as claimed can be made by another materially different apparatus.
The burden is on the examiner to provide an example, but the example need not be documented.
If applicant either proves or provides convincing argument that the alternative example suggested by the examiner is not workable, the burden is on the examiner to suggest another viable example or withdraw the restriction requirement.