To support a requirement for restriction between combination and subcombination inventions, both two-way distinctness and reasons for insisting on restriction are necessary, i.e., there would be a serious search burden if restriction were not required as evidenced by separate classification, status, or field of search. See MPEP § 808.02.
The inventions are distinct if it can be shown that a combination as claimed:
- (A) does not require the particulars of the subcombination as claimed for patentability (to show novelty and unobviousness), and
- (B) the subcombination can be shown to have utility either by itself or in another materially different combination.
When these factors cannot be shown, such inventions are not distinct.
The following examples are included for general guidance.
I. SUBCOMBINATION ESSENTIAL TO COMBINATION
ABsp/Bsp No Restriction
Where a combination as claimed requires the details of a subcombination as separately claimed, there is usually no evidence that combination ABsp is patentable without the details of Bsp. The inventions are not distinct and a requirement for restriction must not be made or maintained, even if the subcombination has separate utility. This situation can be diagrammed as combination ABsp (“sp” is an abbreviation for “specific”), and subcombination Bsp. Thus the specific characteristics required by the subcombination claim Bsp are also required by the combination claim. See MPEP § 806.05(d) for situations where two or more subcombinations are separately claimed.
II. SUBCOMBINATION NOT ESSENTIAL TO COMBINATION
A. ABbr/Bsp Restriction Proper
Where a combination as claimed does not require the details of the subcombination as separately claimed and the subcombination has separate utility, the inventions are distinct and restriction is proper if reasons exist for insisting upon the restriction, i.e., there would be a serious search burden if restriction were not required as evidenced by separate classification, status, or field of search.
This situation can be diagramed as combination ABbr (“br” is an abbreviation for “broad”), and subcombination Bsp (“sp” is an abbreviation for “specific”). Bbr indicates that in the combination the subcombination is broadly recited and that the specific characteristics required by the subcombination claim Bsp are not required by the combination claim.
Since claims to both the subcombination and combination are presented, the omission of details of the claimed subcombination Bsp in the combination claim ABbr is evidence that the combination does not rely upon the specific limitations of the subcombination for its patentability. If subcombination Bsp has separate utility, the inventions are distinct and restriction is proper if reasons exist for insisting upon the restriction.
In applications claiming plural inventions capable of being viewed as related in two ways, for example, as both combination-subcombination and also as species under a claimed genus, both applicable criteria for distinctness must be demonstrated to support a restriction requirement. See also MPEP § 806.04(b).
Form paragraph 8.15 may be used in combination-subcombination restriction requirements.
¶ 8.15 Combination-Subcombination
Inventions  and  are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because . The subcombination has separate utility such as .
The examiner has required restriction between combination and subcombination inventions. 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 continuation or 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.
- 1. This form paragraph is to be used when claims are presented to both combination(s) and subcombination(s) (MPEP § 806.05(c)).
- 2. In bracket 3, specify the limitations of the claimed subcombination that are not required by the claimed combination, or the evidence that supports the conclusion that the combination does not rely upon the specific details of the subcombination for patentability. See MPEP § 806.05(c), subsection II and § 806.05(d).
- 3. In bracket 4, suggest utility other than used in the combination.
- 4. Conclude restriction requirement with form paragraph 8.21.
The burden is on the examiner to suggest an example of separate utility. If applicant proves or provides an argument, supported by facts, that the utility suggested by the examiner cannot be accomplished, the burden shifts to the examiner to document a viable separate utility or withdraw the requirement.
B. ABsp/ABbr/Bsp Restriction Proper
The presence of a claim to combination ABsp does not alter the propriety of a restriction requirement properly made between combination ABbr and subcombination Bsp. Claim ABbr is an evidence claim which indicates that the combination does not rely upon the specific details of the subcombination for its patentability. If a restriction requirement can be properly made between combination ABbr and subcombination Bsp, any claim to combination ABsp would be grouped with combination ABbr.
If the combination claims are amended after a restriction requirement such that each combination, as claimed, requires all the limitations of the subcombination as claimed, i.e., if the evidence claim ABbr is deleted or amended to require Bsp, the restriction requirement between the combination and subcombination should not be maintained.
If a claim to Bsp is determined to be allowable, any claims requiring Bsp, including any combination claims of the format ABsp, must be considered for rejoinder. See MPEP § 821.04.
III. PLURAL COMBINATIONS REQUIRING A SUBCOMBINATION COMMON TO EACH COMBINATION
When an application includes a claim to a single subcombination, and that subcombination is required by plural claimed combinations that are properly restrictable, the subcombination claim is a linking claim and will be examined with the elected combination (see MPEP § 809.03). The subcombination claim links the otherwise restrictable combination inventions and should be listed in form paragraph 8.12. The claimed plural combinations are evidence that the subcombination has utility in more than one combination. Restriction between plural combinations may be made using form paragraph 8.14.01. See MPEP § 806.05(j).