Appeal No. 2001-1553 Page 3
Application No. 09/224,757
appellant can find no protection against the use of U.S. Pat. No. 5,856,631 in a double
patenting rejection of claim 10 in the instant application.
35 U.S.C. § 121 provides as follows:
If two or more independent and distinct inventions are
claimed in one application, the Director 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 the original
application or any patent issued on either of them, if the
divisional application is filed before the issuance of the
patent on the other application. If a divisional application is
directed solely to subject matter described and claimed in
the original application as filed, the Director may dispense
with signing and execution by the inventor. The validity of a
patent shall not be questioned for failure of the Director to
require the application to be restricted to one invention
[emphasis ours].
The practice of election of species is addressed in 37 CFR § 1.146, which
provides as follows:
In the first action on an application containing a generic
claim to a generic invention (genus) and claims to more than
one patentably distinct species embraced thereby, the
examiner may require the applicant in the reply to that action
to elect a species of his or her invention to which his or her
claim [sic: claims] will be restricted if no claim to the genus is
found to be allowable. However, if such application contains
claims directed to more than a reasonable number of
species, the examiner may require restriction of the claims to
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