Appeal No. 2002-0206
Application No. 09/121,725
mollusks as evidence that the inventions are “unrelated, have
different effects, etc” (Appeal Brief, page 9, lines 11-12). The
thrust of this argument appears to be that the examiner cannot for
purposes of restriction practice separate out as patentably
distinct a group of claims to shucking and a group of claims to
elimination of bacteria, then utilize a reference which discloses
shucking against the claims which are directed to elimination of
bacteria.
While on its surface this argument has a certain logical
appeal, the standards for restriction practice are unrelated to
the standards applied for patentability over the prior art. To
restrict out claims, an examiner need only show certain elements
(e.g. differing classification) and issues of patentability over
the prior art are not considered. See, e.g. MPEP 806.02 which
notes that patentability over the prior art is not considered
during restriction. “For the purpose of a decision on the
question of restriction, and for this purpose only, the claims are
ordinarily assumed to be in proper form and patentable (novel and
unobvious) over the prior art. This assumption, of course, is not
continued after the question of restriction is settled and the
question of patentability of the several claims in view of prior
art is taken up.” See also MPEP 807 which notes that
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