1504.05 Restriction
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More than one embodiment of a design may be protected by a single claim.
- Such embodiments may be presented only if they involve a single inventive concept according to the nonstatutory double patenting practice for designs.
Restriction will be required if a design patent application claims multiple designs that are patentably distinct from each other.
I. INDEPENDENT INVENTIONS
Design inventions are independent if there is no apparent relationship between two or more disparate articles disclosed in the drawings; for example, a pair of eyeglasses and a door handle; a bicycle and a camera; an automobile and a bathtub. Restriction in such cases is clearly proper.
II. DISTINCT INVENTIONS
In determining patentable distinctness, the examiner must compare the overall appearances of the multiple designs.
- Each design must be considered as a whole, i.e., the elements of the design are not considered individually as they may be when establishing a prima facie case of obviousness under 35 U.S.C. 103(a).
Designs are not distinct inventions if:
- the multiple designs have overall appearances with basically the same design characteristics; and
- the differences between the multiple designs are insufficient to patentably distinguish one design from the other.
A. Multiple Embodiments - Difference in Appearance
It is permissible to illustrate more than one embodiment of a design invention in a single application. However, such embodiments may be presented only if they involve a single inventive concept.
- Two designs involve a single inventive concept when the two designs are patentably indistinct according to the standard of nonstatutory double patenting.
Embodiments that are patentably distinct over one another do not constitute a single inventive concept and thus may not be included in the same design application.
B. Combination/Subcombination - Difference in Scope
A design claim covers the entire design as a whole. Furthermore, claim protection to the whole design does not extend to any individual part or portion thereof.
Embodiments directed to a design as a whole (combination) as well as individual parts or portions (subcombination) thereof may not be included in a single application if the appearances are patentably distinct.
- In determining whether embodiments of different scope can be retained in a single application they must have overall appearances that are basically the same, and the difference in scope must be minor and not a patentable distinction.
- They must, by themselves, be considered obvious over each other under 35 U.S.C. 103(a) without the aid of analogous prior art.
III. TRAVERSAL OF RESTRICTION REQUIREMENT
If a response to a restriction requirement includes an election with traverse on the grounds that the groups are not patentably distinct, applicant must present evidence or identify such evidence of record showing the groups to be obvious variations of one another.
- Traversal of a restriction requirement alone without an explanation in support thereof will be treated as an election without traverse
A traversal of a restriction requirement based on there being no serious burden to an examiner to search and examine an entire application is not applicable to design patent applications.
- The fact that the embodiments may be searched together cannot preclude a requirement for restriction if their appearances are considered patentably distinct, since patentably distinct embodiments cannot be supported by a single formal design claim.
- Also, clear admission on the record by the applicant, on its own, that the embodiments are not patentably distinct will not overcome a requirement for restriction if the embodiments do not have overall appearances that are basically the same as each other.
