MPEP 806.06
Independent Inventions

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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806.06    Independent Inventions [R-08.2012]

Inventions as claimed are independent if there is no disclosed relationship between the inventions, that is, they are unconnected in design, operation, and effect. If it can be shown that two or more inventions are independent, and if there would be a serious burden on the examiner if restriction is not required, applicant should be required to restrict the claims presented to one of such independent inventions. For example:

  • (A) Two different combinations, not disclosed as capable of use together, having different modes of operation, different functions and different effects are independent. An article of apparel and a locomotive bearing would be an example. A process of painting a house and a process of boring a well would be a second example.
  • (B) Where the two inventions are process and apparatus, and the apparatus cannot be used to practice the process or any part thereof, they are independent. A specific process of molding is independent from a molding apparatus that cannot be used to practice the specific process.

Form paragraph 8.20.02 may be used to restrict between independent, unrelated inventions. Form paragraph 8.20.03 may be used to restrict between an unrelated product and process.

¶ 8.20.02    Unrelated Inventions

Inventions [1] and [2] are unrelated. Inventions are unrelated if it can be shown that they are not disclosed as capable of use together, and they have different designs, modes of operation, and effects. (MPEP § 802.01 and MPEP § 806.06). In the instant case, the different inventions [3].

Examiner Note:

1. This form paragraph is to be used only when claims are presented to unrelated inventions, e. g., a necktie and a locomotive bearing not disclosed as capable of use together.

2. In bracket 3, insert reasons for concluding that the inventions are unrelated.

3. This form paragraph must be followed by form paragraph 8.21.

¶ 8.20.03    Unrelated Product and Process Inventions

Inventions [1] and [2] are directed to an unrelated product and process. Product and process inventions are unrelated if it can be shown that the product cannot be used in, or made by, the process. See MPEP § 802.01 and § 806.06. In the instant case, [3].

Examiner Note:

1. In bracket 3, insert reasons for concluding that the inventions are unrelated.

2. This form paragraph must be followed by form paragraph 8.21.