¶ 8.18 Product and Process of Making
Inventions [1] and [2] are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another materially different product or (2) that the product as claimed can be made by another materially different process (MPEP § 806.05(f)). In the instant case [3].
Examiner Note:
1. This form paragraph is to be used when claims are presented to both a product and the process of making the product (MPEP § 806.05(f)).
2. In bracket 3, use one or more of the following reasons:
(a) --the process as claimed can be used to make a materially different product such as......--,
(b) --the product as claimed can be made by a materially different process such as......--.
3. Conclude the basis for the restriction requirement with form paragraph 8.21.
4. All restriction requirements between a product and a process of making the product should be followed by form paragraph 8.21.04 to notify the applicant that if a product claim is found allowable, process claims that depend from or otherwise require all the limitations of the patentable product may be rejoined.