What is “separate utility“ for purposes of a combination/ subcombination restriction requirement?

When you file a patent application, you’re entitled to file up to three independent claims. So attorneys refer to this says “you get three inventions for each pattern.“ However, the literal literal of the law requires that you only receive a single invention for each patent application.

To ensure that applicants art pulling off multiple inventions per application, examiner has the ability to identify sets of claims within a single application as being drawn the separate inventions, and then require election of one of the identified inventions, and cancellation of The clams drawn to the inventions that the applicant did not “elect.“

The patent office provides examiners with a variety of available theories for requiring election between independent inventions. One is called combination-subcombination. This is the passage used in a restriction requirement:

“Inventions [I and II, etc.] are related as combination some combination. Inventions in this relationship or distinctive it can be shown that (1) the combination as claimed does not require the particulars of the sub combination as claimed for patentability , and (2) that the subcombination has utility by itself or in other combinations (MPEP 806.05 (c).”

The keyword here is “separate utility.“ separate utility means that the invention is useful in a way that the other invention is not. This is sometimes abused by some examiners (in my opinion), by reciting that a line which provides a limitation that defines utility in a specific way is “separate“ from utility of the other invention, simply because the other invention does not recite that line. This is inappropriate.

I’ve drawn a graphic on a whiteboard to illustrate. Explanation follows.

Basically, for purposes of this notion, “Utility“ can be detected as a span of values along an axis representing various degrees in variety of scope between all human practices and zero claimable scope. The area within which utility can be defined between two claims is a tapering region beginning with the combination and extending along an axis representing increasing numbers of limitations in a claim. In order for a sub combination to not have separate utility from the combination, the span of scope of the subcombination must be smaller than the span of the scope representing the range of utilities set by the combination , and must not exceed the maximum and minimum scope “values“ defining the broadest and narrowest edges of the scope of the combination.

I don’t know how many people were thinking hard about this issue, but I hope you enjoy the graphic. If anyone writes me to request a clearer image, I could produce one in a graphics editor, and repost it.