Appeal No. 95-2441
Application 07/987,211
the term of his patent, applicant would be entitled to exclude
others from using the claimed compositions in the manner
indicated in Klose’s patented method claims far beyond the
term of the earlier patent.
Of course, all we have said presumes that the
compositions and the methods of using the compositions are
patentably indistinct inventions and that the examiner has not
required restriction between the compositions and methods of
using the compositions. We hold that the applicant’s
presently appealed composition claims and the patented claims
drawn to methods of using the same composition are patentably
indistinct. In support thereof, we note that claims drawn
both to methods of using the compositions here claimed and the
compositions themselves were initially presented together for
examination in the patented application. See In re Berg, 140
F.3d 1428, 1431-1437, 46 USPQ2d 1226, 1228-1233 (Fed. Cir.
1998).
We have searched the patented file for evidence that the
examiner required restriction between the presently appealed
composition claims and the patented claims drawn to methods of
using the compositions here claimed. We found none.
Accordingly, under 37 CFR § 1.196(b), we hereby newly reject
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