Appeal No. 1998-2422
Application 08/488,380
they are broader than and encompass the subject matter of
claims 3-5, 10, and 11 (FR2-3; EA3).
It is manifest that claims 77-80 and 83-88 are obvious
over claims 3-5, 10, and 11 of the '687 patent because
claims 3-5, 10, and 11 of the '687 patent contain all the
limitations of claims 77-80 and 83-88 plus additional
limitations. However, this does not answer Appellant's
argument about the estoppel effect of the restriction
requirement.
Section 121, third paragraph, (section 121[3]) of
35 U.S.C. provides that where the Patent and Trademark Office
(PTO) requires restriction, the patent of either the parent or
any divisional application thereof conforming to the
requirement cannot be used as a reference against the other.
Section 121[3] effects a form of estoppel that shields the
applicant from having to prove the correctness of the
restriction requirement in order to preserve the patentability
of a divisional application. See Studiengesellschaft Kohle
mbH v. Northern Petrochemical Co., 784 F.2d 351, 357-61,
228 USPQ 837, 842-45 (Fed. Cir. 1986) (Newman, J.,
concurring). Section 121[3] will not apply to remove the
- 5 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007