800 Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting

806.05(d) Subcombinations Usable Together

This section indicates:

"Two or more claimed subcombinations, disclosed as usable together in a single combination, and which can be shown to be separately usable, are usually restrictable when the subcombinations do not overlap in scope and are not obvious variants. To support a restriction requirement where applicant separately claims plural subcombinations usable together in a single combination and claims a combination that requires the particulars of at least one of said subcombinations, both two-way distinctness and reasons for insisting on restriction are necessary. Each subcombination is distinct from the combination as claimed if:..."

 

First: I have found that some examiners may be confused about the phrase "..subcombinations do not overlap in scope..". It appears that 'overlapping' means; e.g.:

 

Claim 1. A, B and C

Claim 2. A, B, C and D

Claim 3. A, B, C, D and E

Claim 4. A, B, C, D, E and F

 

Subsequently, it appears that non-overlapping subcombinations would appear as (for example):

 

Claim 1. A, B and C.

Claim 2. A, B and D.

Claim 3. A, B and E.

Claim 4. A, B and F.

 

However, the MPEP does not make clear what 'overlapping' means and as such, it appears, respectfully, that there is some confusion as to the intended meaning of 'overlap[ing]'.

 

Secondly, this section of the MPEP first indicates that the combination must simply be disclosed: "Two or more claimed subcombinations, DISCLOSED as usable together in a single combination" but later indicates that the combination must be claimed: "To support a restriction requirement where applicant separately CLAIMS plural subcombinations usable together in a single combination and claims a combination that requires the particulars of at least one of said subcombinations"

 

(please excuse caps, I have no other emphasis ability on this program)

 

 

It would be helpful if this section of the MPEP were amended to clarify what 'overlapping' means and to clarify if restriction between subcombinations may be made when there is a disclosure, but not necessarily a claim to, the combination.

 

Thank you for your consideration.

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Idea No. 161