Appeal No. 2002-0993 Page 2
Application No. 09/368,781
being drawn to a nonelected species, there being no allowable generic or linking claim.1
We AFFIRM-IN-PART.
BACKGROUND
The appellants' invention relates to hand tools with multi-faceted inserts for
cutting wire and other materials (specification, p. 1). A copy of the claims under appeal
is set forth in the appendix to the appellants' brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Root 477,066 June 14, 1892
Petersen 2,590,031 Mar. 18, 1952
1 Manual of Patent Examining Procedure (MPEP) § 821 provides that (1) all claims that the
examiner holds as not being directed to the elected subject matter are withdrawn from further
consideration by the examiner; (2) the examiner should clearly set forth in the Office action the reasons
why the claims withdrawn from consideration are not readable on the elected invention; and (3) applicant
may file a petition under 37 CFR § 1.144 for review of the restriction requirement. In response to a
species requirement (Paper No. 8, mailed February 8, 2001), the appellants elected Figure 1 and stated
that claims 1 to 5, 7, 8, 10, 11, 14 and 37 to 49 were generic (see Paper No. 9, filed March 12, 2001).
However, in withdrawing claims 45 to 49 from consideration in the final rejection, the examiner did not
clearly set forth the reasons why claims 45 to 49 were not readable on the elected species of Figure 1. In
any event, the withdrawal of claims 45 to 49 from consideration relates to a petitionable matter and not to
an appealable matter. See MPEP §§ 1002 and 1201. Accordingly, we will not review the withdrawal from
consideration issue raised by the appellants on pages 17-18 of the brief. In addition, the examiner's
objection to the drawings under 37 CFR § 1.83(a) raised in the final rejection also relates to a petitionable
matter and not to an appealable matter. Accordingly, we will not review the drawing issue raised by the
appellant on page 5 of the brief.
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