Appeal No. 1998-2422
Application 08/488,380
patent as a reference where the principle of consonance
(maintaining a line of demarcation) is violated. See Symbol
Technologies Inc. v. Opticon Inc., 935 F.2d 1569, 1579,
19 USPQ2d 1241, 1249 (Fed. Cir. 1991). Because of section
121[3], the PTO bears a heavy burden to guard against
erroneous requirements for restriction. See Manual of Patent
Examining Procedure § 804.01 (5th ed., Rev. 14, Nov. 1992).
Here, there is no assertion that Appellant has violated
the principle of consonance by amending the claims so as to
bring them back over the line imposed by the restriction
requirement. It is clear that claims 77 and 83 correspond to
claims 45 and 46 in the '412 application. Nor has the4
Examiner argued that the restriction requirement was imposed
in error. It is not clear that we would have the authority to
review the correctness of the restriction requirement or do
anything about it even if it was in error. See
Studiengesellschaft, 784 F.2d at 360, 228 USPQ at 844.
Because of the restriction requirement in the '412
application, 35 U.S.C. § 121[3] precludes application of the
It is presumed that claim 46 was intended to depend on4
claim 45 rather than claim 5.
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