Appeal No. 2001-2646 Page 11
Application No. 08/463,951
58 USPQ2d at 1878 (quoting Berg, emphasis added by the Lilly court). The Lilly
court held that the PTO was not solely responsible for the delay in that case,
because
the [first-filed, later-issued] ‘549 patent issued in December 1986,
approximately eight months after a continuation-in-part was filed,
which stemmed from a continuation application, which in turn
stemmed from a divisional of the ‘379 application that was filed in
January 1974. Further, an expert hired on behalf of Lilly . . ., in
discussing claim 7 of the ‘549 patent, stated: “[I]t is true that the
claim could have been presented earlier. . . .” This statement
indicates that the delay was not solely caused by the PTO.
Id. at 969 n.7, 58 USPQ2d at 1878 n.7. Thus, according to Berg and Lilly, if the
PTO is not solely responsible for the delay causing the first-filed application to
issue later, then the application claims are subject to a one-way test to determine
whether a rejection for double patenting is appropriate.
In this case, Appellants have caused at least part of the delay that has
resulted in this application still being pending, even though a later-filed
application has matured into the ‘009 patent. First, the instant application is a
divisional of application 08/153,847. The ‘847 application was subject to a
restriction requirement (see the ‘847 application’s Paper No. 7, mailed August 11,
1994). As a result of that restriction, Appellants elected to pursue certain claims
and other claims, including those now on appeal, were withdrawn from further
consideration.
As noted, the restriction requirement was mailed August 11, 1994; in
addition, the examiner stated that “[d]uring a telephone conversation with Mr.
Gaylo on August 4, 1994 a provisional election was made with traverse to
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