Appeal No. 2001-1553 Page 6
Application No. 09/224,757
In light of (1) the language in the election requirement and in 37 CFR § 1.146
conditioning restriction of the claims to a single species on the holding of no generic
claim to be allowable and (2) the ultimate allowance of a generic claim in the parent
application, we conclude that no restriction requirement was in fact made pursuant to
35 U.S.C. § 121 and 37 CFR § 1.146. It thus follows that the instant application, which
was filed after the allowance of a generic claim in the parent application, was not a
divisional application filed as a result of a restriction requirement and, hence, that 35
U.S.C. § 121 does not prohibit the use of appellant’s earlier patent in a double patenting
rejection against claim 10 in the instant application.1 This being appellant’s only
argument as to error on the part of the examiner in rejecting claim 10 under the
judicially created doctrine of double patenting, the examiner’s decision to reject claim 10
under the judicially created doctrine of double patenting is affirmed.2
Appellant may file a terminal disclaimer in compliance with 37 CFR § 1.321(c) to
obviate all rejections under the judicially created doctrine of double patenting based on
U.S. Pat. No. 5,856,631, provided the patent is shown to be commonly owned with this
application.
1 Note situation (C) in MPEP § 804.01.
2 There is no indication on the record whether this application was submitted to the Technology
Center Director for approval in accordance with MPEP § 804.04. In any event, in light of our
determinations supra, that section of the MPEP may not be pertinent to this application.
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