Appeal No. 2001-1553 Page 5
Application No. 09/224,757
stated that “[w]ith the allowance of generic claims in this application, Applicant looks
forward to examination of all the claims presented in this Application” (Paper No. 3 in
parent application). Subsequent to the first Office action on the merits (Paper No. 4 in
the parent application), however, appellant voluntarily canceled all of the claims
directed to non-elected species, namely, claims 9, 10, 12 and 15-20 (see pages 2 and 7
of Paper No. 5 of the parent application).
Ultimately, at least one generic claim (now patent claim 1) was allowed in the
parent application. If appellant had retained dependent claim 10 directed to the smooth
axial bore feature in the parent application, upon the allowance of a generic claim in
Paper No. 7 in the parent application, appellant would have been entitled to
consideration of such a claim (or an independent claim directed to the smooth bore
feature and including all of the limitations of the allowed generic claim) in the parent
application pursuant to 37 CFR § 1.146, as explained by the examiner in Paper No. 2 in
the parent application. That appellant was aware of this fact is evident from the above-
quoted language in appellant’s response (Paper No. 3 in the parent application) to the
election requirement. Instead of presenting a dependent claim, or a claim otherwise
including all of the limitations of an allowed generic claim, directed to the smooth bore
feature in the parent application, appellant opted to file the instant application on
January 4, 1999, just one day before the issuance of U.S. Pat. No. 5,856,631 resulting
from the parent application, presenting, inter alia, claim 10 directed to the smooth bore
feature.
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