Appeal No. 1996-3816 Page 9
Application No. 08/293,331
dispose of the patentability issue in appellant's favor as
argued. See In re Lonardo 119 F.3d 960, 968, 43 USPQ2d 1262,
1268 (Fed. Cir. 1997), cert. denied 118 S.Ct 1164 (1998).
Appellant further asserts that the obviousness-type
double patenting rejection is not justified since the examiner
asserted that the product could be made by another method in a
restriction requirement between product and method claims in
parent application No. 07/423,317 (brief, page 5). At the
outset, we note that the provisions of the third sentence of
35 U.S.C. § 121 do not prohibit the use of the Mine patent in
the obviousness-type double patenting rejection at issue
herein since the application upon which the Mine patent issued
was voluntarily filed and was not the subject of a restriction
requirement. Moreover, we do not find the examiner's
statements in making the restriction requirement in the parent
application No. 07/423,317 particularly relevant to the
present inquiry for reasons set forth by the examiner at pages
5 and 6 of the answer.
We do not agree with the view expressed in the dissenting
opinion regarding the appropriateness of assigning an estoppel
effect to the examiner's prior restriction requirement in
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