Appeal No. 2003-1469 Page 11
Application No. 08/479,886
74. The variant of claim 54 wherein said variant is covalently attached to a
polyethylene glycol molecule.
The instant specification discloses that the helices 1 and 2 of human
growth hormone span amino acids 6-33 and 72-92, respectively. See page 15.
Thus, the loop linking helices 1 and 2 apparently is made up of amino acids 34-
71; the C-terminal 2/3 of that loop would therefore correspond to amino acids 46-
71. The specification also discloses that helix 4 of human growth hormone spans
amino acids 155-184. See page 15. Thus, the C-terminal 1/2 of that helix would
correspond to amino acids 169-184. In other words, the claims in the two
applications appear to define substantially similar products, albeit in different
terms. Of course, the claims of the ‘883 application are limited to mammalian
growth hormone variants, while the instant claims are not; the claims therefore do
not appear to be directed to identical subject matter.
Upon return of this case, the examiner should consider whether the claims
of this application and application 08/479,883 are unpatentable for obviousness-
type double patenting. If so, a provisional rejection on that basis should be made
in both applications.
The examiner should also note that a restriction requirement precludes a
double patenting rejection only if the claims in the respective 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
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