Appeal No. 1998-3272
Application 08/461,393
between these statutorily different inventions (brief, pages 16-17). Appellants cite no authority
for their position, and we have found none.
It is well settled that under 35 U.S.C. § 121, the Commissioner “may require
restriction” but is not required to do so, and where this “administrative convenience” is
exercised in an application and a divisional application of that application, which is drawn to
the “other invention” and which “complies with the requirements of section 120,” is filed, a
patent issuing on either application can not be the basis of a double patenting rejecting against
the other. Thus, this statutory provision applies only to an application in which a restriction
requirement has been made by the examiner pursuant thereto, and the restrictive terms of that
requirement are complied with in the divisional lineage of that application. See generally,
Applied Materials, Inc v. Advanced Semiconductor Materials, 98 F.3d 1563, 1567-69,
40 USPQ2d 1481, 1483-85 (Fed. Cir. 1996); Gerber Garment Technology, Inc. v. Lectra Sys.,
Inc., 916 F.2d 683, 688, 16 USPQ2d 1436, 1440 (Fed. Cir. 1990); see also Manual of Patent
Examining Procedure §§ 803.01 and 804.01.
The fact that restriction was required in the present case between a claimed product and
a claimed process using that product, provides no benefit to appellants with respect to the
claims of Winter ‘381 even though the appealed claims and the claims of Winter ‘381 stand in
the same relationship which the examiner cited in requiring restriction, because the present
application and Winter ‘381 are simply not related in the sense of a parent application and its
divisional offspring. Furthermore, appellants’ notion, that the judicial doctrine of obviousness-
type double patenting does not apply where the Commissioner could have required restriction if
the claims of the application and the conflicting patent claims were in the same application, is
flawed as it results in the unjustifiably extension of the patent term by the patenting of an
obvious variation of a patented invention without the filing of a terminal disclaimer. See
generally, Applied Materials, 98 F.3d at 1568, 40 USPQ2d at 1484, and the cases cited therein.
Accordingly, we affirm this ground of rejection.
The examiner’s decision is affirmed.
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