Appeal No. 1997-3351
Application 08/490,573
application 08/258,627 (Paper No. 6, page 2; emphasis supplied) contained the following statement:
Claim 9 is linking among the inventions of Groups I, II, III and IV, and will be examined along
with the invention of Group I, II, III or IV, whichever is elected.
Present claim 11 was the invention of AGroup II@ as was not elected. No other reference to claim 9
appears in the requirement for restriction, which claim was subsequently allowed.
We must agree with appellants that this statement is plainly interpreted as specifying that claim 9
would be examined only with whichever one of the four identified inventions is elected for examination.
Thus, we find that appellants involuntarily filed the present divisional application in order to obtain
examination of an invention non-elected pursuant to this requirement for restriction made under 35
U.S.C. ' 121, with the reasonable expectation that the now claimed invention would not be rejected on
the grounds of double patenting over the patent issuing on the parent application as prohibited by ' 121.
Indeed, the requirement for restriction as written does not advise appellants that the same was made
subject to the nonallowance of linking claim 9 such that upon the allowance of this claim, the restriction
requirement would be removed. Therefore, the facts of this case do not fit situation (C) of MPEP '
804.01 (6th ed., Rev. 2, July 1996). Cf. Form Paragraph 8.12 in MPEP ' 809.03 (7th ed., Rev. 2,
July 1997).
We are not persuaded otherwise by the examiner=s argument that Asubparagraph (C) of
M.P.E.P. 804.01 operates to permit the double patenting rejection in the instant case, since applicant
[sic, applicants] had constructive knowledge of the contents of M.P.E.P. 809.03@ (supplemental
answer, pages 1-2). Even if appellants did review MPEP ' 809.03 (6th ed., Rev. 2, July 1996), they
would not have found therein any notice of the effect of the allowance of a linking claim, and if they had
continued on to MPEP ' 818.03(d) (6th ed., Rev. 2, July 1996) as well as MPEP ' 809 (6th ed., Rev.
2, July 1996), there is no indication in either section that the examiner=s requirement for restriction
relying on 35 U.S.C. ' 121 made in parent application 08/258,627 (Paper No. 6, page 2) implicitly
included the notice that the examiner now alleges to have been clearly intended.1
1 The practice and procedure set forth in MPEP ' 804.04 (6th ed., Rev. 2, July 1996) provides that
Aevery action containing a rejection on the ground of double patenting of a divisional . . . application
(where the divisional application was filed because of a requirement to restrict by the examiner under 35
U.S.C. 121 . . . ) must be submitted to the Group Director for approval prior to mailing.@ We find no
indication in the record that the Group Director approved of the examiner=s ground of rejection in this
application.
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