Appeal No. 2003-1103 Page 9
Application No. 09/212,029
withdrawn because of this restriction requirement. Claim 10 contained the
limitation “means for detecting said amplified polynucleotide.” Reply Brief,
Appendix. Claims 44 and 46 in the present application contain this same
limitation, “means for detecting said amplified polynucleotide.” Therefore, claims
44 and 46, at least in regards to this limitation, correspond to claim 10 of the ‘199
application, which was withdrawn pursuant to the restriction requirement.
In this regard, the third sentence of 35 U.S.C. § 121 provides that:
[A] patent issuing on an application with respect to which a
requirement for restriction . . . has been made . . . shall not be
used as a reference either in the Patent and Trademark Office or in
the courts against a divisional application . . . if the divisional
application is filed before the issuance of the patent on the other
application.
35 U.S.C. § 121; see Reply Brief, page 11 (citing 35 U.S.C. § 121). The instant
application satisfies these requirements because it is a continuation of the
divisional application “which divisional (08/614,242) was filed before the issue
date of the ‘392 patent.” Reply Brief, page 11. Appellants also cite In re Berg,
130 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998) for the proposition that “[w]hen
such a divisional application is filed, the PTO is prohibited from using the claims
of the patent issuing on the application that prompted the restriction requirement
as a reference against the claims of any divisional application.” Id. at 1436, 46
USPQ2d at 1232. This rule applies where the claims in the two applications are
maintained consonant with the restriction requirement.
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