Appeal No. 2001-1553 Page 4
Application No. 09/224,757
not more than a reasonable number of species before taking
further action in the application.
Pursuant to 37 CFR § 1.146, in an action mailed October 15, 1997 (Paper No. 2
in parent Application No. 08/753,182), the examiner pointed out that the parent
application contained claims directed to several patentably distinct species of the
claimed invention and stated the following:
Applicant is required under 35 U.S.C. § 121 to elect a
single disclosed species for prosecution on the merits to
which the claims shall be restricted if no generic claim is
finally held to be allowable.
Applicant is advised that a response to this
requirement must include an identification of the
species that is elected consonant with this requirement,
and a listing of all claims readable thereon, including
any claims subsequently added. An argument that a
claim is allowable or that all claims are generic is considered
nonresponsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will
be entitled to consideration of claims to additional species
which are written in dependent form or otherwise include all
the limitations of an allowed generic claim as provided by 37
CFR § 1.141. If claims are added after the election,
applicant must indicate which are readable upon the elected
species. MPEP § 809.02(a).
Should applicant traverse on the ground that the
species are not patentably distinct, applicant should submit
evidence or identify such evidence now of record showing
the species to be obvious variants or clearly admit on the
record that this is the case. In either instance, if the
examiner finds one of the inventions patentable over the
prior art, the evidence or admission may be used in a
rejection under 35 U.S.C. 103(a) of the other invention.
In response to the above-mentioned Office action, appellant elected one of the
enumerated species, identified the claims which read on the elected species, and
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