Appeal No. 1997-3047
Application 08/480,152
request as a request for rehearing under 37 CFR
§ 1.197(b)(1997).
Appellant argues that the examiner’s January 15, 1976
restriction requirement established that the generic claim was
separately patentable from the species claims (request,
pages 2-3). What the examiner stated in the restriction
requirement (pages 2-3) is that “[s]ince the various compounds
embraced by the claims are not so related that a prior art
reference anticipating the claims in respected [sic] to
certain members would render the claims obvious in respect to
other members, applicant is further, required to elect a
single disclosed species and to list all claims readable
thereon including claims subsequently added.” This statement
clearly pertains to separate patentability among the species,
and not to separate patentability of the genus and any of the
species therein, because a reference which anticipates a
specie also anticipates a genus which encompasses that specie.
See In re Gosteli, 872 F.2d 1008, 1010, 10 USPQ2d 1614, 1616
(Fed. Cir. 1989).
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