BALDWIN, Senior Circuit Judge.
Sarah C. Watkinson (Watkinson) appeals the decision of the Board of Patent Appeals and Interferences (board), of the United States Patent and Trademark Office (PTO), Appeal No. 88-3520, affirming the decision of the examiner rejecting all the claims in reissue application serial no. 06/817,286 for U.S. Patent No. 4,481,219 ('219), under 35 U.S.C. § 251 (1982), as lacking a statutory basis for reissue. We affirm.
Watkinson's original application, serial no. 06/395,928, filed July 7, 1982, was directed to compositions for and methods of inhibiting the growth of timber fungus. During prosecution, the examiner subjected the application to a restriction requirement, designating the following groups:
A reissue application, serial no. 06/817,286, was filed on January 9, 1986, with claims 1-35 corresponding to those in the '219 patent and claims 36-38 corresponding to claim 38 which had been cancelled from the original application. The examiner rejected all of the claims in the reissue application under 35 U.S.C. § 251 (1982)
Watkinson then appealed to the board arguing that her acquiescence in the restriction requirement in the original application was an error correctable by reissue because the restriction requirement had, in fact, been improper. She explained that her failure to traverse the restriction requirement was due to her agent's mistaken belief that the invention of claim 38 was unpatentable.
The board found that the case before it fell squarely within the holding of In re Orita, 550 F.2d 1277, 1281, 193 USPQ 145, 149 (CCPA 1977), and that the record simply did not support Watkinson's excuse for not traversing the restriction requirement. It concluded that Watkinson's errors involved nothing more than a deliberate choice to file a divisional application rather than traverse the restriction requirement, and a subsequent failure to file such a divisional. Therefore, it sustained the examiner's section 251 rejection.
The issue in this case is whether the board erred in affirming the examiner's rejection of all the claims in a reissue application under 35 U.S.C. § 251 (1982) when the alleged error was the acquiescence in a restriction requirement in the original application.
We find no error in the board's analysis and conclusion in this case.
In In re Orita, the issue was whether the failure to file a divisional application was an error causing the original patent to be partially inoperative and thus correctable by reissue under 35 U.S.C. § 251. 550 F.2d at 1280, 193 USPQ at 148. This court's predecessor court found that the failure to file a divisional simply cannot be related back as an error in the issued patent. Id. It further stated that "granting by reissue claims substantially identical to those non-elected in application I would be ignoring the proper restriction requirement set forth in that application in which appellants acquiesced." 550 F.2d at 1280, 193 USPQ at 149 (emphasis added). By focusing on the single word "proper" in the above quotation, Watkinson argues that the propriety of the restriction requirement was central to the Orita decision, and should be central to our analysis here. Hence, Watkinson dedicates much of her brief to a discussion of the merits of the restriction requirement in the original application and concedes that if the restriction requirement were proper, the '219 patent issued error free.
In light of the record and relevant case law, however, we reject Watkinson's argument and hold that the failure to file a divisional application, regardless of the propriety of the underlying restriction requirement, is not an error correctable by reissue under 35 U.S.C. § 251.
Ex parte Holt and Randell, 214 USPQ 381 (Bd.Pat.App. & Inter.), vacated, majority opinion adopted on reh'g, 218 USPQ 747 (Bd.Pat.App. & Inter.1982) cited by Watkinson is neither binding on this court, nor does it support Watkinson's position. The central issue in Holt was whether acquiescence in an improper rejection of a Markush claim under 35 U.S.C. § 121 (1982)
Thus, although the impropriety of the rejection of a Markush claim was central to the Holt decision, nowhere in Holt did the board engage in the kind of analysis Watkinson demands of this court here.
We agree with the board that this case falls squarely within the holding of In re Orita where the court said that section 251 "is not a panacea designed to cure every mistake which might be committed by an applicant or his attorney, and the case at bar exemplifies a mistake which this section cannot cure." 550 F.2d at 1281, 193 USPQ at 149; cf. Ball Corp. v. United States, 729 F.2d 1429, 1435, 221 USPQ 289, 293 (Fed.Cir.1984) ("Reissue is not a substitute for Patent [and Trademark] Office appeal procedures."). Moreover, we will not permit Watkinson to undermine the co-pendency requirement under sections 120
Accordingly, the board's decision is