MPEP Q & A 146: When Can a Combination as Claimed Show that Inventions are Distinct?

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Question:

When can a combination as claimed show that inventions are distinct?

Answer:

Inventions are distinct if it can be shown that a combination as claimed:

  • (A) does not require the particulars of the subcombination as claimed for patentability (to show novelty and unobviousness), and
  • (B) the subcombination can be shown to have utility either by itself or in another materially different combination.

When these factors cannot be shown, such inventions are not distinct.

Chapter Details:

The answer to this question can be found in chapter 800 of the MPEP. This chapter covers Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting.

The answer is from the 9th Edition, Revision 07.2015. Depending on future changes to the MPEP, the question and answer may be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 806.05(c) of the MPEP.  The following is a brief summary of section 806.05(c).

806.05(c) Criteria of Distinctness Between Combination and Subcombination

The inventions are distinct if it can be shown that a combination as claimed:

  • (A) does not require the particulars of the subcombination as claimed for patentability (to show novelty and unobviousness), and
  • (B) the subcombination can be shown to have utility either by itself or in another materially different combination.

When these factors cannot be shown, such inventions are not distinct.