Appeal No. 2003-1668 Page 11
Application No. 08/479,883
As noted above (see footnote 2), the amino acids corresponding to the
helix or loop regions in instant claim 54 correspond precisely to the amino acids
specified in the ‘886 application’s claim 66. Thus, the claims in the two
applications appear to define basically the same products, albeit in different
terms. Of course, the instant claims are limited to mammalian growth hormone
variants, while the ‘886 application’s 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 08/479,886 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
imposed in the restriction requirement. Where that line is crossed the prohibition
of the third sentence of [35 U.S.C. §] 121 does not apply.” Gerber Garment
Technology Inc. v. Lectra Systems Inc., 916 F.2d 683, 688, 16 USPQ2d 1436,
1440 (Fed. Cir. 1990). Section 121 does not appear to preclude a double
patenting rejection here.
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