Is restriction proper for combination? subcombination? protest?
Q) Restriction
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{ 15 comments… read them below or add one }
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.
MPEP 806.05
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.
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.
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). . . .
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.
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?
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
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.
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”
Got questions about criteria of requiring restriction of combination/subcombination.
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.
I got this question 5/16/2011. The variant that AdamA mentioned above.
Got a variant (not the linking variant, but a different one) on 6/28/11, had to look it up.
I had a Q like this 8/24 exam