Appeal No. 2002-2030 Page 17
Application No. 09/294,663
See Paper No. 4, mailed Sept. 1, 1999 (restriction) and Paper No. 7, filed Nov.
19, 1999 (election).
It is true that 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.” This statutory
language precludes an examiner from using the earlier application to reject the
later one on the basis of obviousness-type double patenting. See MPEP
§ 804.01.
That general rule, however, only applies where the claims in the two
applications are maintained consonant with the restriction requirement.
“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).
The third sentence of § 121 does not preclude a rejection for obviousness-
type double patenting in this case. First, the instant case is a continuation-in-
part, not a divisional, of the ‘429 application. It therefore does not fall within the
literal terms of the statute. In addition, as the tables above show, the claims in
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