Is restriction proper for combination? subcombination? protest?
Q) Restriction
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Is restriction proper for combination? subcombination? protest?
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Next post: Q) Notice of Appeal
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?
(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.
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
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.
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.
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.
I think this option sounds reasonable for me.
Combination/subcombination & linking variant on 9/23/12
Got this one today regarding restriction on combination/subcombination.
Got the same question on Oct 9, 2012.
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.
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
Not unless she is a joint inventor or patent practitioner. See MPEP 401, 402.
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
more intensively, I mean.
Got a variant on 3/30/13. The question was what is appropriate for a restriction NOT involving a combination/subcombination?