Comments on: Q) Restriction

By: Mattz

Mattz — Fri, 13 Apr 2012 04:01:57 +0000

The text below is from 809: Which basically says that a restriction requirement shall be withdrawn if the linking claim is allowed.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allowable, should any linking claim be allowable, the restriction requirement between the linked inventions must be withdrawn. Any claim(s) directed to the nonelected invention(s), previously withdrawn from consideration, which depends from or requires all the limitations of the allowable linking claim must be rejoined and will be fully examined for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.

By: Kerstin

Kerstin — Sun, 18 Mar 2012 20:59:14 +0000

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.

By: maggie

maggie — Fri, 21 Oct 2011 17:23:15 +0000

I had a Q like this 8/24 exam

By: Axo

Axo — Fri, 01 Jul 2011 14:13:06 +0000

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

By: Becker

Becker — Tue, 17 May 2011 19:24:28 +0000

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

By: Overworkked

Overworkked — Thu, 28 Apr 2011 19:04:54 +0000

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.

By: misspatent

misspatent — Fri, 01 Apr 2011 18:19:43 +0000

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”

By: Anne

Anne — Thu, 20 Jan 2011 03:16:29 +0000

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

By: studier

studier — Sat, 04 Dec 2010 20:02:10 +0000

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). . . .

By: studier

studier — Sat, 04 Dec 2010 19:57:40 +0000

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.