¶ 8.20 Product and Process of Using
Inventions [1] and [2] are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case [3].
Examiner Note:
1. This form paragraph is to be used when claims are presented to both the product and process of using the product (MPEP § 806.05(h). If claims to a process specially adapted for (i.e., not patentably distinct from) making the product are also presented such process of making claims should be grouped with the product invention. See MPEP § 806.05(i).
2. In bracket 3, use one or more of the following reasons:
(a) --the process as claimed can be practiced with another materially different product such as......--,
(b) --the product as claimed can be used in 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 using 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.