Appeal 2006-2966
Application 09/148,152
of the rejection was a correctable error under § 251 and that applicant's
failure to file a timely divisional application in response to the improper
rejection should not foreclose § 251 relief.
Interestingly, Holt was similarly relied on by the appellant in
Watkinson. As explained in Watkinson, 900 F.2d at 232, 14 USPQ2d at
1409, there is a legally significant difference between the rejection in Holt
and a restriction requirement. That is, a restriction requirement is "proper"
under 35 U.S.C. § 121, whereas the rejection of a Markush claim is not. Id.
Moreover, the merit of a restriction requirement is not reviewable on appeal
since the requirement is a matter within an Examiner's discretion and not
tantamount to a rejection of claims. Id., 900 F.2d at 233, 14 USPQ2d at
1409. For these reasons, the court in Watkinson found Holt inapplicable to
the facts of that appeal.
The facts of the Watkinson appeal parallel the facts of the subject
appeal. The applicants in both cases acquiesced in a restriction or election
requirement, canceled (or permitted cancellation of) the non-elected claims
and accepted issuance of a patent containing elected claims only. Therefore,
we likewise find Holt inapplicable to the facts of this appeal.
In an apparent attempt to analogize the facts of this appeal to those of
Holt, Appellant argues that the election of species requirement "results in
114 permutations of combinations of 'species' [, and] [t]he result is a
de facto rejection of Claim 17 resulting in a denial of generic coverage such
that Applicant could not be made whole through the filing of multiple
applications to each species" (Br. 12). Thus, Appellant argues that the
"cancellation" of generic claim 17 (i.e., amendment of claim 17 to limit it to
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