Appeal No. 2002-2030 Page 16
Application No. 09/294,663
Thus, instant claims 6, 9, 21, and 22 are generic to the ‘558 patent’s
claims 7 and 8. That is, the ‘558 patent’s claims are limited to methods
comprising expression of nucleotide sequences encoding SEQ ID NO:3 or SEQ
ID NO:4, while the instant claims encompass expression of nucleotide
sequences that encode any IIM protein (claims 6 and 9) or any T. ni IIM protein
(claims 21 and 22). A later genus claim is not patentably distinct from an earlier
species claim. See Eli Lilly v. Barr Labs., 251 F.3d at 971, 58 USPQ2d at 1880.
We therefore conclude that instant claims 3, 5-7, 9, 10, 21, and 22 are not
patentably distinct from claims 1-3 and 6-8 of the ‘558 patent. Claims 3, 5-7, 9,
10, 21, and 22 are therefore properly rejected for obviousness-type double
patenting. As far as we can tell, however, the examiner has not rejected any of
the claims in this application for obviousness-type double patenting. Nor has the
examiner provided a basis, on the record, for concluding that the instant claims
are patentably distinct from those of the ‘558 patent.
The examiner may have concluded that an obviousness-type double
patenting rejection could not be made because the claims in both this application
and application 09/103,429 (which gave rise to the ‘558 patent) were subject to a
restriction requirement, and different groups of claims were elected in each case.
That is, in the parent application, Appellants elected to pursue claims directed to
“microorganisms, comprising an expression vector encoding an IIM protein.” See
the ‘429 application’s Paper No. 7, mailed August 30, 1999 (restriction); and
Paper No. 8, filed Nov. 19, 1999 (election). In this application, Appellants elected
to pursue claims directed to IIM-encoding genes and transformed plant cells.
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