Appeal 2006-2966
Application 09/148,152
elected species only) was not in response to an election of species
requirement but rather was in response to a de facto rejection of a generic
claim (Br. 11).
This argument is unpersuasive. The Examiner's election of species
requirement can not be properly considered a de facto rejection which is
analogous to the improper Markush rejection in Holt. Indeed, as expressly
stated in Watkinson, 900 F.2d at 233, 14 USPQ2d at 1409, "a restriction
requirement is a matter within the discretion of the Examiner and not
tantamount to a rejection of claims."
As further support for his position, Appellant cites In re Doyle,
293 F.3d 1355, 1358, 63 USPQ2d 1161, 1163 (Fed. Cir. 2002), wherein the
court determined that failure to present a so-called linking claim (i.e., a
generic claim broad enough to read on or link two or more groups of claims
subject to a restriction requirement) is an error correctable by reissue.
(Further Supple. Br., filed July 1, 2002, 1-2; Reply to Supple. Examiner's
Answer, filed July 11, 2006, 3-4). According to Appellant, "[t]he facts of
the present case fall into the situation described by the court in Doyle [since]
[t]he new claims in the instant reissue application are generic, or "linking,"
claims which are broader than any nonelected claims and could have been
prosecuted with the elected claims" (Further Supple. Br. 2). As a matter of
clarification, we point out that the "new claims" referred to by Appellant are
newly added reissue claims 10-39 and that Appellant characterizes
independent reissue claim 10 as a generic claim corresponding to generic
claim 17 of the '177 patent application (Br. 6-7 and 23-24 (Appendix II)).
10
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