806.05(j) Related Products; Related Processes [R-07.2022]
To support a requirement for restriction between two or more related product inventions, or between two or more related process inventions, both two-way distinctness and reasons for insisting on restriction are necessary, i.e., separate classification, status in the art, or field of search. See MPEP § 808.02. See MPEP § 806.05(c) for an explanation of the requirements to establish two-way distinctness as it applies to inventions in a combination/subcombination relationship. For other related product inventions, or related process inventions, the inventions are distinct if
- (A) the inventions as claimed do not overlap in scope, i.e., are mutually exclusive (i.e., a claim to the final product does not read on the intermediate, and vice versa);
- (B) the inventions as claimed are not obvious variants; and
- (C) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect. See MPEP § 802.01.
The burden is on the examiner to provide an example to support the determination that the inventions are distinct, but the example need not be documented. If applicant either proves or provides convincing evidence that the example suggested by the examiner is not workable, the burden is on the examiner to suggest another viable example or withdraw the restriction requirement.
As an example, an intermediate product and a final product can be shown to be distinct inventions if the intermediate and final products are mutually exclusive inventions (not overlapping in scope) that are not obvious variants, and the intermediate product as claimed is useful to make something other than the final product as claimed. Typically, the intermediate loses its identity in the final product. See also MPEP § 806.05(d) for restricting between subcombinations disclosed as usable together. See MPEP § 809 – § 809.03 if a generic claim or claim linking multiple products or multiple processes is present.
Form paragraph 8.14.01 may be used to restrict between related products or related processes; form paragraph 8.14 may be used in intermediate-final product restriction requirements; form paragraph 8.16 may be used to restrict between subcombinations.
¶ 8.14.01 Distinct Products or Distinct Processes
Inventions [1] and [2] are directed to related [3]. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed [4]. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Examiner Note:
- 1. This form paragraph may be used when claims are presented to two or more related product inventions, or two or more related process inventions, wherein the inventions as claimed are mutually exclusive, i.e., there is no product (or process) that would infringe both of the identified inventions. Use form paragraph 8.15 to restrict between combination(s) and subcombination(s).
- 2. If a generic claim or claim linking multiple product inventions or multiple process inventions is present, see MPEP § 809 – § 809.03.
- 3. In bracket 3, insert –products — or –processes–.
- 4. In bracket 4, explain why the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect.
- 5. Conclude restriction requirement with form paragraph 8.21.
¶ 8.14 Intermediate-Final Product
Inventions [1] and [2] are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as [3] and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Examiner Note:
- 1. This form paragraph is to be used when claims are presented to both an intermediate and final product (MPEP § 806.05(j)).
- 2. Conclude restriction requirement with form paragraph 8.21.
¶ 8.16 Subcombinations, Usable Together
Inventions [1] and [2] are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case subcombination [3] has separate utility such as [4]. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Examiner Note:
- 1. This form paragraph is to be used when claims are presented to subcombinations usable together (MPEP § 806.05(d)).
- 2. In bracket 3, insert the appropriate group number or identify the subcombination.
- 3. In bracket 4, suggest utility other than with the other subcombination.
- 4. Conclude restriction requirement with form paragraph 8.21.