Appeal No. 2003-1103 Page 10
Application No. 09/212,029
Consonance requires that the line of demarcation between the
‘independent and distinct inventions’ that prompted the restriction
requirement be maintained. Though the claims may be amended,
they must not be so amended as to bring them back over the line
imposed in the restriction requirement. Where that line is crossed
the prohibition of the third sentence of Section 121 does not apply.
Gerber Garment Technology Inc. v. Lectra Systems Inc., 916 F.2d 683, 688, 16
USPQ2d 1436, 1440 (Fed. Cir. 1990). As stated above, withdrawn claim 10 and
instant claims 44 and 46 contain the same limitation, “means for detecting said
amplified polynucleotide.” Reply Brief, Appendix. Because instant claims 44 and
46 are consonant with the restricted and subsequently withdrawn claim 10 of the
‘199 application, the ‘392 patent is not available as a reference for rejecting the
instant claims under the judicially-created doctrine of obviousness-type double
patenting. The examiner’s rejection is reversed.
Summary
We reverse the rejection under 35 U.S.C. § 102(e) because Schnipelsky
does not reasonably appear to disclose a device for amplifying a preselected
polynucleotide in a sample by conducting a polynucleotide polymerization
reaction that satisfies all of the limitations of appellants’ claims. Further, we
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