Appeal No. 1997-3805
Application No. 08/439,602
restriction requirement in parent application serial no. 08/121,072, and the generic
enhancers in the two divisional applications remain the same as they were at filing. Brief,
page 4.
The examiner points out that patented claims 4, 10 and 16 were not original claims
in the parent application that gave rise to the two divisional applications at issue here, but
were added by amendment. Thus, the examiner argues that “these claims are not
consonant with the restriction requirement made in the parent application since the claims
have changed in material respects from the claims at the time the requirement was made .
. . and the line of demarcation between the independent and distinct inventions identified
by the examiner in the parent application does not exist.” Examiner’s Answer, page 8.
Nevertheless, appellant argues “to claim the specific compound, Applicant could
and did place it in one (and only one) of the two applications” and “should not be penalized
or limited in the scope of his rights because the Examiner failed to appreciate that the
groups were not fully distinct at the time the restriction requirement was made.” Brief,
page 4. We note that appellant, despite being aware of the same facts as the examiner,
did not traverse the restriction requirement. Instead, appellant chose to place a claim in
one of the divisional applications that is simultaneously a species of the genuses claimed
in the two divisional applications. Be that as it may, we do not find that the confusion
surrounding the original restriction requirement, in and of itself, justifies an extension of the
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