Separate Utility Means Two Different Uses

Some restriction requirements under the MPEP require a showing of separate utility. Specifically, MPEP 806.05(c) Criteria of Distinctness Between Combination and Subcombination, states that:

To support a requirement for restriction between combination and subcombination inventions, both two-way distinctness and reasons for insisting on restriction are necessary, i.e., there would be a serious search burden if restriction were not required as evidenced by separate classification, status, or field of search. See MPEP § 808.02.

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.

Examiners often skip over the requirement to show separate utility. Not that it would be hard for them - it might take an extra 4 seconds in preparing the action to come up with a plausible basis. Nevertheless, in the cut-and-paste restriction requirement world we live in, it is not common for restriction requirements to be complete.

An example is illustrated in SN 14/090,382. The examiner (who has a lot of red on, by the way), presented a restriction that almost completely full of cut-and-paste “boilerplate”. The sum total of the reasoning that was beyond boilerplate assertions was as follows:


Unfortunately, this case was not about unique codes or any of the other things mentioned here - that was actually a copy-and-paste from another case.

Many examiners properly use restrictions where the claims are legitimately subject to restriction in that they are covering separate concepts and there would be a serious search burden in examining them together. Others obviously game the system without repercussions of any kind. We’ll leave it up to the reader to make their own call on this case.

Continuing, the applicant here rightly petitioned. After all, the examiner had no specific reasons for a serious search burden, and hardly even did anything more than throw down some random words, as the invention was actually about presenting experimentally-determined data relating to a region of interest on a medical patient. Further, the restriction was actually a 3-way restriction between the system claim and 2 sets of method claims.

Note that before the applicant petitioned, they properly traversed. The examiner’s response to this was mere boilerplate, and did not even correct the fact that the examiner cut-and-paste the restriction from another file.

On petition, the applicant summarize the (now comically bad) restriction:


The Office of Petitions predictably granted the requested relief and forced the examiner to withdraw the restriction.


Now, this was an easy petition to win - the examiner pretty much guaranteed that. The more important point here is that the case illustrates a good path to winning petitions against restriction even if the examiner had put in an ounce of effort. Specifically, the grounds of the decision would apply any time the examiner does not actually spell out two separate and distinct uses for two separate claim groups. While it seems obvious that the Examiner would spell out two distinct uses to show separate utility, many examiners do not.

The applicant here is still fighting and most recently tried an appeal. The examiner re-opened prosecution to update the Section 101 rejection. Will the applicant prevail in the end?