The opinion in support of the decision being entered today
was not written for publication and is not binding precedent of
the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte BENOIT HEINRICHS,
JEAN-PAUL PIRARD and RENE PIRARD
______________
Appeal No. 1997-3351
Application 08/490,573
_______________
HEARD: February 13, 2001
_______________
Before KIMLIN, PAK and WARREN, Administrative Patent Judges.
WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
This is an appeal under 35 U.S.C. ' 134 from the decision of the examiner finally rejecting claim
11, the sole claim in the application.
The threshold issue in this appeal is the whether the examiner=s rejection of claim 11 under the
judicially created doctrine of obviousness type double patenting over United States Patent 5,538,931
(answer, page 2) is proper in view of the manner in which the invention encompassed by this claim was
restricted from other claimed inventions under the authority of 35 U.S.C. ' 121 by the examiner in
parent application 08/258,627 (Paper No. 6), which matured into said Patent and which is the parent of
this divisional application. A copy of the restriction requirement is found in appellants= brief (appendix
AB@). We agree with appellants that, on this record, the ground of rejection cannot stand.
In pertinent part, ' 121 prohibits the use of A[a] patent issuing on an application with respect to
which a requirement for restriction has been made, . . . as a reference . . . against a divisional
application . . . filed before the issuance of the patent on the other application.@ Thus, the prohibition
against a double patenting rejection stated in this statutory provision applies where it is clear that the
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