Appeal No. 2003-1103 Page 8
Application No. 09/212,029
columns 8 and 11, refers to the thickness of the thermal transfer wall, and “not
the dimensions of the flow channel and reaction chamber required in appellants’
claims 12-15, 23, 39, 40 and 44-47.” Appeal Brief, page 12.
Therefore, because Schnipelsky does not contain all of the limitations of
appellants’ claims, it cannot anticipate. For the reasons discussed above, the
rejection under 35 U.S.C. § 102(e) is reversed.
2. Obviousness-type double patenting
The examiner rejected claims 44 and 46 under the judicially-created
doctrine of obviousness-type double patenting, on the basis that these claims
were not patentably distinct from claim 15 of U.S. Patent No. 5,498,392. See
Examiner’s Answer, page 6.
The examiner reasoned that “a detection chamber [as in the ‘392 patent’s
claim 15] is reasonably a ‘means’ for detecting . . . amplified polynucleotide as
utilized in both the instant application as well as in said Patent reference.”
Examiner’s Answer, pages 6-7. The examiner also argues that the instant claims
and claim 15 of the ‘392 patent are directed to devices and are “therefore . . .
contained within the same restriction group and not restricted as distinct.” Paper
No. 11, mailed Sept. 26, 2000, page 5.
We disagree. A restriction requirement was made during the prosecution
of U.S. Patent Application No. 08/308,199, the application that issued as the ‘392
patent. Claim 26, which became claim 15 in the ‘392 patent, and claim 10 were
placed into two different restriction groups. Claim 10 of the ‘199 application was
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