Appeal No. 1997-3047
Application 08/480,152
Appellant argues that consonance is not an absolute
requirement for 35 U.S.C. § 121 to apply (request, page 3).
Appellant relies upon Applied Materials Inc. v. Advanced
Semiconductor Materials, 98 F.3d 1563, 1568, 40 USPQ2d 1481,
1484 (Fed. Cir. 1996), wherein the majority stated that “even
if such consonance [i.e., demarcation among the separate
inventions] is lost, double patenting does not follow if the
requirements of § 121 are met or if the claims are in fact
patentably distinct.” Section 121 requires that inventions1
which are restricted from each other must be independent and
distinct from each other. As explained in our decision (pages
5-6), the generic claims in the present case are not
independent and distinct from the claims in Sorenson ‘834 or
Sorenson ‘171. Appellant, therefore, is not entitled to the
benefit of 35 U.S.C. § 121.
Appellant argues that Eli Lilly & Co. v. Barr Labs. Inc.,
1In a dissent-in-part, Judge Archer, citing Gerber
Garment Technology, Inc. v. Lectra Sys., 916 F.2d 683, 688, 16
USPQ2d 1436, 1440 (Fed. Cir. 1990), stated that “[t]his court
has ruled, however, that the protection of § 121 is only
available for claims issued on a divisional application that
are consonant with the examiner’s restriction requirement.”
Applied Materials, 98 F.3d at 1577, 40 USPQ2d at 1492.
3
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