Current Examination Practice in View of In Re Brouwer and In Re Ochiai

1. Current Examination Practice in View of In Re Brouwer and In Re Ochiai • There are no per se rules in examining process claims. • The examiner must consider the process as a whole using Graham v. John Deere Co., 383 US 1, 17, 148 USPQ 459, 467 (1966), analysis.

2. Current Examination Practice Con’t. • Where the claim is directed to a process which requires the use of a novel and nonobvious reagent and/or product to establish a prima facie case of obviousness, the examiner must clearly set forth reasons for finding that the claimed process, as a whole, would have been obvious even though the process uses novel and nonobvious reagent and/or product.

3. Current Examination Practice Con’t. • For process of making claims, the examiner must provide motivation for making novel and nonobvious reagent and/or product. • For process of use claims, the examiner must provide motivation for using the novel and nonobvious reagent and/or product.

4. Treatment of Restricted Subject Matter • In applications where restriction between product and process of making or process of using is required under 35 USC 121, if applicant elects to prosecute the product claims and the product is subsequently found allowable, withdrawn process claims which depend therefrom or otherwise include all limitations of the allowable product claim will be rejoined.

5. Restricted Subject Matter Con’t. • This would include all method of use claims which are commensurate in scope with the allowed product claims. • This is true regardless of the number and different uses of the allowed product claims.

6. Restricted Subject Matter Con’t. • The rejoinder of the claims and corresponding withdrawal of the restriction requirement is done without the need for applicant to request the same.