Appeal No. 98-1563 Page 6
Application No. 08/469,198
[t]he subject matter claimed in the instant continuation
application is fully disclosed in the referenced
copending application, now U.S. Pat. 5,478,234 and is
covered by any patent granted on that copending
application since the referenced copending application
and the instant application are claiming common subject
matter, as follows: the scope of the present broadened
application claims 39, 52 is covered by the allowed
claims in U.S. Pat. 5,478,234. Furthermore, there is no
apparent reason why applicant would be [sic, was]
prevented from presenting claims corresponding to those
of the instant application in the other Copending
application. In re Schneller, 397 F.2d 350, 158 USPQ 210
(CCPA 1968). See also MPEP § 804. A terminal disclaimer
may overcome this rejection but the appellants have not
and would not provide one.
The appellants' argue (brief, pp. 6-8 and reply brief,
pp. 1-3) that this rejection is prohibited by 35 U.S.C. § 121.
We agree.
35 U.S.C. § 121 provides:
If two or more independent and distinct inventions are
claimed in one application, the Commissioner may require
the application to be restricted to one of the
inventions. If the other invention is made the subject of
a divisional application which complies with the
requirements of section 120 of this title it shall be
entitled to the benefit of the filing date of the
original application. A patent issuing on an application
with respect to which a requirement for restriction under
this section has been made, or on an application filed as
a result of such a requirement, shall not be used as a
reference either in the Patent and Trademark Office or in
the courts against a divisional application or against
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