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806.05(f) Process of Making and Product Made [R-5] - 800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting
806.05(f) Process of Making and Product Made [R-5]
A process of making and a product made by the process can be shown to be distinct inventions if either or both of the following can be shown: (A) that the process as claimed is not an obvious process of making the product and the process as claimed can be used to make another materially different product; or (B) that the product as claimed can be made by another materially different process.
Allegations of different processes or products need not be documented.
A product defined by the process by which it can be made is still a product claim (In re Bridgeford, 357 F.2d 679, 149 USPQ 55 (CCPA 1966)) and can be restricted from the process if the examiner can demonstrate that the product as claimed can be made by another materially different process; defining the product in terms of a process by which it is made is nothing more than a permissible technique that applicant may use to define the invention.
If applicant convincingly traverses the requirement, the burden shifts to the examiner to document a viable alternative process or product, or withdraw the requirement.
Form paragraphs 8.18 and 8.21.04 should be used in restriction requirements between product and process of making.
¶ 8.18 Product and Process of Making
Inventions [1] and [2] are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another materially different product or (2) that the product as claimed can be made by another materially different process ( MPEP § 806.05(f)). In the instant case [3].
Examiner Note
1. This form paragraph is to be used when claims are presented to both a product and the process of making the product ( MPEP § 806.05(f)).
2. In bracket 3, use one or more of the following reasons:
--the process as claimed can be used to make a materially different product such as......--,
--the product as claimed can be made by a materially different process such as......--.
3. Conclude the basis for the restriction requirement with one of form paragraphs 8.21.01 through 8.21.03.
4. All restriction requirements between a product and a process of making the product should be followed by form paragraph 8.21.04 to notify the applicant that if a product claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable product may be rejoined.
**>¶ 8.21.04 Notice of Potential Rejoinder of Process Claims in Ochiai/Brouwer Situation
The examiner has required restriction between product and process claims. Where applicant elects claims directed to the product, and the product claims are subsequently found allowable, withdrawn process claims that depend from or otherwise require all the limitations of the allowable product claim will be considered for rejoinder. All claims directed to a nonelected process invention must require all the limitations of an allowable product claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product are found allowable, an otherwise proper restriction requirement between product claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product claim will not be rejoined. See MPEP § 821.04(b). Additionally, in order to retain the right to rejoinder in accordance with the above policy, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product claims. Failure to do so may result in a loss of the right to rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Examiner Note
This form paragraph should appear at the end of any requirement for restriction between a product and a process of making the product (see form paragraph 8.18) or between a product and a process of using the product (see form paragraph 8.20).
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