concurring.
I concur in the result reached in the main opinion, but there are a few points I wish to make clear.
35 U.S.C. § 121 deals with a matter of PTO practice known as “requirements for division” prior to the 1952 Patent Act which, for the first time, provided a statutory provision on this subject. It did so, under the heading “Divisional Applications,” by giving the Commissioner a discretionary, unappealable power to restrict an application to one of several claimed inventions when those inventions were found to be “independent and distinct.” 35 U.S.C. § 121, first sentence; see also P. J. Federico, “Commentary on the New Patent Act” 35 U.S.C.A. p. 1, at p. 34 (1954).
Ever since Ex parte Eagle, 1870 C.D. 137 (Com’r. Pats.1870), at least, the expression used in § 121, “two or more * * * inventions are claimed,” has connoted separate claims to separate inventions. It has no reference to generic or broad claims which “embrace” (the term used by the examiner and the board herein) or “cover” (the term used in the solicitor’s brief in support of the board) two or more inventions. Section 121 nowhere uses the words “embraced” or “covered.” It says “claimed,” and that I take to mean what it has always referred to in the terminology *460of the patent law, a “claim” or definitional paragraph which, in the words of § 112, second paragraph, is “particularly pointing out and distinctly claiming the subject matter the applicant regards as his invention.”
*459(b) Claims to the invention or inventions not elected, if not canceled, are nevertheless withdrawn from further consideration by the examiner by the election, subject however to reinstatement in the event the requirement for restriction is withdrawn or overruled.
*460Dealing, as it does, with requirements for restriction, § 121 says nothing whatever about the rejection of claims, a matter entirely separate from restriction. For one thing, rejections are appealable to the board and restriction requirements are not. Federico, op. cit. p. 34; 37 CFR § 1.144.
On this appeal from the rejection of claims 1-6 we do not have before us a restriction requirement under § 121. Such a requirement would not have been appeal-able to the board. We have before us an appeal from affirmance of a rejection. The examiner purported to base it on § 121 and the board accepted that theory, citing in support its own prior decision in Ex parte Haas, 188 USPQ 374, wherein it had said, “we believe the referred to section of the patent statute [§ 121] does provide a basis for such a rejection,” namely, a rejection of a single claim “drawn to a multiplicity of independent and distinct inventions.”1
In dealing with claims 1-6, in spite of the fact there are multiple claims, we are not dealing with separate claims to separate inventions. Claim 1 is a generic claim and claims 2-6 are dependent thereon. They are all generic claims but of varying scope. They are treated together and each claim is rejected on the same ground, as being drawn to multiple allegedly independent and distinct inventions. Careful review of all statements by the examiner and the board makes it clear beyond question that the only basis asserted for rejecting claims 1-6 is that they cover or embrace or are directed to a plurality of independent and distinct inventions, and this is the sole reason given for saying they are “improper Markush claims” or for saying there is “misjoinder [of inventions] under 35 USC 121.” Section 121 is asserted as the only legal basis for this rejection.2
The practice here challenged is tantamount to a refusal by the PTO to examine a single Markush claim in a single application because, in its opinion, it is broad enough to “embrace” or “cover” a plurality of inventions which, if presented separately, would be separately patentable, assuming any one of them to be prior art.3 The label it attaches to such a broad claim is “improper Markush” and the situation is described as “misjoinder.”
The fault in the PTO position is that it overlooks the obvious fact that almost any reasonably broad claim “embraces” or “covers” a multiplicity of inventions, in the sense of “dominating” them, which inventions might be separately patentable if and when presented in separate applications. Logically, this is not a sufficient excuse for refusing to examine a claim on its merits for compliance with 35 U.S.C. §§ 101, 102, 103, and 112. None of those statutory sections, of course, justifies a refusal to examine.
The only justification or statutory authority put forward for refusing to examine is 35 U.S.C. § 121. There is nothing therein, however, to excuse a refusal to examine an elected invention or an applicant’s generic (broad) claim reading thereon, notwithstanding the generic claim reads on nonelected inventions and possibly many others, all potentially separately patentable. The PTO’s own rules recognize the distinction between generic claims and separately *461patentable inventions encompassed or covered thereby. 37 CFR § 1.141 deals explicitly with “independent and distinct inventions” 4 even permitting five of them to be patented on one application along with a generic claim. As to species in excess of five specifically claimed, it is implicit that they may still fall within the “coverage” of the generic claim even if separately patented. It is elementary patent law that the number of “species” “covered” by a patent having a generic claim is virtually without limit notwithstanding the limitation of Rule 141 to five species “specifically claimed.” So the discretionary power to limit one application to one invention is no excuse at all for refusing to examine a broad generic claim — no matter how broad, which means no matter how many independently patentable inventions may fall within it.
Of course a broad claim may be unpatentable for any number of reasons, but we are not here dealing with a question of patentability under the statute but with a refusal to examine.
The only basis here claimed in support of the labels “improper” and “misjoinder” is the scope of the claim. That is not sufficient excuse.
As for the true meaning of the words “two or more independent and distinct inventions are claimed” in § 121, being based — as they were — on the “division” practice existing in the then Patent Office in 1952, there can be no doubt they refer to separate inventions separately claimed and to a requirement to put separate claims in separate applications or at least to restrict one application to one claimed invention. There is no indication that enactment of § 121 contemplated refusing examination to generic claims because of their scope or that applicants were to be denied the right to present single claims of any breadth they chose and have them examined.
The PTO effort of the past few years to justify its refusal to examine by issuing a “rejection” pursuant to the May 1, 1974, notice (MPEP 803) on the basis of § 121 is mere semantic gamesmanship.
With respect to the remand to consider the “improper Markush” rejection of claims 1-6, it is my view, based on careful analysis of the rejections actually made, that the PTO, following the May 1,1974, notice (922 OG 1016), created a new kind of “improper Markush” rejection based on 35 U.S.C. § 121 which we are reversing. There remains, however, a vast body of precedent antedating the 1974 notice on what proper “Markush” claims are. As I understand the majority’s remand, it is for the purpose of examining claims 1-6 under the pre-notice law relating to Markush practice in the process of examining these claims on their merits. Until now, such examination has been refused because they “cover” or “embrace” too much, a basis of rejection we find impermissible.
. Even the dissenting member of the board, who felt the “Markush” claims there involved were not to “independent and distinct” inventions, agreed that § 121 was a proper “legal basis” for a rejection.
. In addition to § 121, the examiner relied on the Commissioner’s notice published May 1, 1974, in 922 O.G. 1016, now MPEP 803, as authorizing the rejection. That notice also, and solely, relies on § 121 for authority. In view of our decision here, it is obvious that the substance of the notice and the MPEP provision corresponding to it are as lacking in foundation as the rejection we are reversing.
. This is the essence of the test for independence and distinctness set forth in the third paragraph of the Commissioner’s notice of May 1, 1974, in determining whether the examiner has authority to reject a claim, under the fourth paragraph of the notice.
. Note Rule 141’s wording: “Two or more independent and distinct inventions may not be claimed in one application, except * * *.” (My emphasis.) Compare the wording of 35 U.S.C. § 121.