MPEP Section 806.05(e), Process and Apparatus for Its Practice
Executive summary:
This document contains Section 806.05(e) ("Process and Apparatus for Its Practice ") of the Manual of Patent Examining Procedure (the "M.P.E.P."), Eighth Edition, Eighth Revision (July 2010). This page was last updated in January 2011. You may return to the section index to find a particular section. Alternatively, you may search the MPEP using the search box that appears on the left side of every page of BitLaw--you may restrict your search to the MPEP on the search results page.
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806.05(e) Process and Apparatus for Its Practice [R-5]
Process and apparatus for its practice can be shown to be distinct inventions, if either or both of the following can be shown: (A) that the process as claimed can be practiced by another materially different apparatus or by hand; or (B) that the apparatus as claimed can be used to practice another materially different process.
Form paragraph 8.17 may be used to make restriction requirements between process and apparatus.
**>¶ 8.17 Process and Apparatus
Inventions [1] and [2] are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another materially different process. ( MPEP § 806.05(e)). In this case [3].
Examiner Note
1. This form paragraph is to be used when claims are presented to both a process and apparatus for its practice ( MPEP § 806.05(e)).
2. In bracket 3, use one or more of the following reasons:
--the process as claimed can be practiced by another materially different apparatus such as......--,
--the process as claimed can be practiced by hand--,
--the apparatus as claimed can be used to practice another materially different process such as......--.
3. A process can be practiced by hand if it can be performed without using any apparatus.
4. Conclude restriction requirement with one of form paragraphs 8.21.01 through 8.21.03.
<The burden is on the examiner to provide reasonable examples that recite material differences.
If applicant proves or provides convincing argument that there is no material difference or that a process cannot be performed by hand (if examiner so argued), the burden is on the examiner to document another materially different process or apparatus or withdraw the requirement.