Appeal No. 95-1250
Application 07/901,722
art of record in the final rejection dated September 14, 1993 (Paper No. 8, p. 6), “is drawn to a non-
elected invention that is a combination of the sub-combination polymer composition that was elected
by original presentation for prosecution on the merits ...” (Answer, p. 1). According to the examiner,
he “regrets this oversight and notes that this claim has not been argued separately from the
composition claimed by Appellant at any point throughout prosecution or in the brief for appeal”
(Answer, p. 1). Regrets or not, the examiner’s restriction was improper at the time it was made in
the prosecution. Under the second sentence of 37 CFR § 1.142(a), a restriction must be made before
final action. For judicial economy, we will not consider claim 24 as having been withdrawn from2
consideration. For the foregoing reasons, we will consider this appeal as from the final rejection of
claims 1-3, 19-21 and 24, the only claims remaining in the application.
The Claimed Subject Matter
The claims on appeal are directed to a phenolic resin developer. Claim 1 is illustrative of the
claimed subject matter:
1. A phenolic developer resin having free carboxyl groups represented by the
formula:
2The second sentence of 37 CFR § 1.142(a) states: “If the distinctness and independence of the inventions be
clear, such requirement will be made before any action on the merits; however, it may be made at any time before final
action in the case at the discretion of the examiner” (emphasis ours).
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