Appeal No. 1995-2659
Application 07/896,705
requirement. If not, an obviousness-type double-
patenting rejection may be appropriate. At minimum, the
reasons for finding independent and distinct invention
should be clarified on the record.
The basis for the restriction requirement was this:
Inventions Groups I and II are two different
processes which overlap in that they both involve
oxidation steps while distributed in a solid support
matrix. However, invention Group II involves additional
process steps prior to the oxidation step and uses
different starting materials than Group I. Applicant
requested reconsideration of this restriction. However,
on its face these two Groups appear to involve
different process steps.
See Application 07/576,633 (now US 5,185,252); first
Office action; paper no. 5; mailed October 2, 1991, p. 2.
First, we note that the examiner states that the
process of the patented claims (Invention I) “overlap”
that of the application claims (Invention II). Actually,
overlapping inventions suggest they are not distinct and
independent of each other.
Second, examiner points out that the application
claims include an additional process step than set forth
in the patented claims. Assuming this is the case, we
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