Q) Restriction

by patentbar on August 1, 2008 · 29 comments

in Exam Questions

Is restriction proper for combination? subcombination? protest?

{ 29 comments… read them below or add one }

1 John DoeNo Gravatar April 8, 2009 at 1:22 pm

I had this question. It asks about the standard for imposing a restriction requirement where combinations/subcombinations are involved. I was able to eliminate a couple answers based on the MPEP but can’t remember any specifics.

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2 passthepatentbarNo Gravatar May 22, 2009 at 4:47 pm

MPEP 806.05

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3 cindoNo Gravatar September 4, 2009 at 1:11 am

806.05(c):

To support a requirement for restriction >between combination and subcombination inventionsthere would be a seriuos search burden as evidenced byanother materiallycombination<.
When these factors cannot be shown, such inventions are not distinct.

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4 studierNo Gravatar December 4, 2010 at 2:57 pm

806.05(a) Combination and Subcombination**
[R-3]
A combination is an organization of which a subcombination
or element is a part.
**
806.05(c) Criteria of Distinctness *> Betweenandbetween
combination and subcombination inventionsthere would be a seriuos
search burden as evidenced byanother materiallycombination<.
When these factors cannot be shown, such inventions
are not distinct.

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5 studierNo Gravatar December 4, 2010 at 3:02 pm

The following examples are included for general
guidance.
**>
I. SUBCOMBINATION ESSENTIAL TO
COMBINATION
. . .
Where a combination as claimed sets forth the
details of the subcombination as separately claimed,
there is 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.
. . .
II. SUBCOMBINATION NOT ESSENTIAL
TO COMBINATION
. . .
Where a combination as claimed does not set forth
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 as evidenced
by separate classification, status, or field of search.
. . .
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). . . .

6 sethzNo Gravatar January 22, 2010 at 2:29 pm

Related question about combination/subcombination restriction, in 2002 Oct AM #45. But that particular question ask about ownership right/assignment.

45. John filed a nonprovisional patent application in the USPTO claiming two distinct inventions, a combination and a subcombination. At the time of filing the nonprovisional application, he recorded an assignment of all right, title, and interest in the inventions claimed in the application to ABC Corporation. In the first Office action, the examiner required restriction, and John elected the combination. A year later, during the pendency of the nonprovisional application, John filed a divisional patent application claiming the subcombination. At the time of filing the divisional application, John assigned all right, title, and interest in the inventions claimed in the divisional application to XYZ Corporation, and the latter party recorded the assignment within three months of the assignment. Following recordation of the assignment to XYZ Corporation, which of the following statements is false?
(A) The Office should treat John as having no ownership rights in the combination.
(B) The Office should treat John as having no ownership rights in the subcombination.
(C) ABC Corporation has no ownership rights in the subcombination.
(D) XYZ Corporation has no ownership rights in the combination.
(E) XYZ Corporation has no ownership rights in the subcombination.

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7 ChrisNo Gravatar April 17, 2010 at 12:14 am

I believe that the answer is (C), because C is false. ABC Corp has rights to both the original parent application and the divisional application as the divisional is considered a subset of rights in the original assignment, as the subject matter therein came from the parent. John has no rights to either application.

Anyone know for sure?

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8 RLNo Gravatar September 17, 2013 at 7:22 pm

(C) seems right. Because John gave up all rights to ABC, he cannot transfer it to XYZ. Only ABC would be able to transfer rights to XYZ.

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9 MarianneNo Gravatar May 27, 2010 at 10:35 pm

ANSWER: (C) is a false statement and therefore the correct answer. Under 35 U.S.C.
§ 261, “An assignment, grant, or conveyance shall be void as against any subsequent purchaser
or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and
Trademark Office within three months from its date or prior to the date of such subsequent
purchase or mortgage.” (C) is correct because ABC Corporation acquired all of John’s ownership
rights in the original patent application, including the subcombination claimed in the original
nonprovisional and divisional patent applications. The assignment of the rights to ABC
Corporation was recorded in the USPTO prior to the subsequent acquisition of the
subcombination by XYZ Corporation. U.S.C. § 261. ABC Corporation’s recordation of its
assignment gave constructive notice to XYZ Corporation. MPEP § 306 recites that in the case of
a division…application, a prior assignment recorded against the original application is applied to
the division…application because the assignment recorded against the original application gives
the assignee rights to the subject matter common to both applications. (A) and (B) are true
statements and therefore wrong answers. John gave up his ownership rights when he executed
the assignment to ABC Corporation. The assignment to ABC Corporation carries with it the
transfer of the bundle of rights associated with subject matter common to the original patent

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10 AdamANo Gravatar September 13, 2010 at 12:06 pm

Variant on Sept. 12, 2010.
Involved a restriction requirement with a linking claim. Claim 1 and Claim 3 linked by Claim 2. I believe that I answered something like traverse the restriction, elect either Claim 1 or Claim 3 and attach linking claim 2 to the one selected.

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11 misspatentNo Gravatar April 1, 2011 at 2:19 pm

That seems correct. Se 809: “The linking claims must be examined with>, and thus are considered part of,. When all claims directed to the elected invention are allowable,allowablebetween the linked inventionsrequires”

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12 AnneNo Gravatar January 19, 2011 at 10:16 pm

Got questions about criteria of requiring restriction of combination/subcombination.

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13 OverworkkedNo Gravatar April 28, 2011 at 3:04 pm

Variant on 4/27/2011

Complex question and answer set. Answers were permutations of distinct, utility, and searching.

Looking at MPEP you can whack a few of the answers, but you need to spend 5 mins on this problem and exclude each answer 1 by 1.

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14 BeckerNo Gravatar May 17, 2011 at 3:24 pm

I got this question 5/16/2011. The variant that AdamA mentioned above.

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15 AxoNo Gravatar July 1, 2011 at 10:13 am

Got a variant (not the linking variant, but a different one) on 6/28/11, had to look it up.

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16 maggieNo Gravatar October 21, 2011 at 1:23 pm

I had a Q like this 8/24 exam

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17 KerstinNo Gravatar March 18, 2012 at 4:59 pm

I got a question like this on 11/3/11 that was very hard. I struggled greatly with how to look it up. I still dream about that damn question and it was the main reason I seriously considered doing an exam review!! I’d at least memorize the section of the MPEP where look up is, chapter 800. I spent forever just trying to find it.

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18 MattzNo Gravatar April 13, 2012 at 12:01 am

The text below is from 809: Which basically says that a restriction requirement shall be withdrawn if the linking claim is allowed.

The linking claims must be examined with, and thus are considered part of, the invention elected. When all claims directed to the elected invention are
allowable, should any linking claim be allowable, the restriction requirement between the linked inventions must be withdrawn. Any claim(s) directed to the nonelected invention(s), previously withdrawn from consideration, which depends from or requires all the limitations of the allowable linking claim must be rejoined and will be fully examined for patentability.

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19 passedatlastNo Gravatar June 19, 2012 at 6:06 pm

I got another combo/subcombo question about when is it okay to restrict. The variations in the answers involved whether there where separate search fields (i.e. onerous for the PTO), whether the combo needed the subcombo to meet 112, and whether the subcombo could stand independently.

I chose okay to restrict where the search fields are separate, the combo doesn’t need the subcombo for patentability, and subcombo stands alone.

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20 JamieNo Gravatar July 21, 2012 at 8:02 am

I think this option sounds reasonable for me.

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21 MojoNo Gravatar September 23, 2012 at 6:11 pm

Combination/subcombination & linking variant on 9/23/12

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22 RandomNo Gravatar October 15, 2012 at 9:01 pm

Got this one today regarding restriction on combination/subcombination.

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23 WanderingNo Gravatar October 15, 2012 at 11:12 pm

Got the same question on Oct 9, 2012.

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24 MwhitNo Gravatar November 3, 2012 at 10:50 am

I wanted to say a BIG thanks to anyone that has posted on this site. It was instrumental in me passing the Exam yesterday. I am a mom of three lil ones under six so being able to quickly jump on this site and review was huge.

Here are some of the questions that I saw yesterday (11/2/12)
5 AIA questions (easy to recognize because of the date, 2012+)
Is Requester allowed to file a second req for Reexam if based on SNQP, (YES)
Subcombo/Combo (Sec 800 MPEP)
Linking Claim
94 Year old inventor, can daughter speak with Examiner on his behalf
10 Appeal Questions-Remand to Board, New Rejection by Board
Product by Process (April 2000/6) (MPEP 2173)
Effective Amount (MPEP 2173)
Prior Are Exclusion (706.02i) 103c can only be invoked when ref qualifies as prior art under 102f, g, or e
Design Patent filed 6 months, not 12 mon
India agent wrote patent, do they have duty to disclose (YES)
Shoe Polish to help hair grow, how can they claim (METHOD)
Market Force (Determine Obviousness, YES)
ExParte Exam (What is true)
Double Patenting or Terminal Disclaimer (know that common or shared ownership is needed for Double Patenting)
Reply and Assert New Grounds for Exparte Reexam
Protest
Business Method (Bilski) I said- claims to an abstract idea
2 KSR questions-know the 7 factors
Supplemental Oath, when is it treated as an amendment (in a REISSUE)
Request for information (Petition to Withdraw requirement)
Canceled matter from a patent can be used for 102e prior art (FALSE)
What can an assignee not of record sign (TERMINAL DISCLAIMER)
Claim limitation with NOT invoke USC 112 6th Para (searched 2181)

This is all that I can recall right now. If I think of more I will post!

Good luck and keep motivated, even if you fail the first time.

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25 gotta get through thisNo Gravatar November 4, 2012 at 1:16 am

Mwhit,

I have one question. Can the daughter speak on the behalf of the 94 year old? I see this question alot and honestly can’t find a definite answer. Your help is much appreciated :)

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26 TJNo Gravatar December 13, 2012 at 5:09 pm

Not unless she is a joint inventor or patent practitioner. See MPEP 401, 402.

27 khaled M. AbdulatifNo Gravatar March 28, 2013 at 3:26 pm

Can someone drop to may email a link or two about prceedings and litigation of design application and design patent?
khaled196354@yahoo.com
all the best for all
thx,
Khaled

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28 khaled M. AbdulatifNo Gravatar March 28, 2013 at 10:06 pm

more intensively, I mean.

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29 ZNo Gravatar March 31, 2013 at 3:27 pm

Got a variant on 3/30/13. The question was what is appropriate for a restriction NOT involving a combination/subcombination?

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