Appeals 2006-1443 and 2006-1465
Reexamination Control Nos. 90/004,950 and 90/005,200
1 5.
2 Appellants’ first argument is bottomed on a restriction requirement made by
3 former Examiner Nicholas Rizzo.
4 According to Appellants, Examiner Rizzo made a restriction requirement between
5 claims said to cover an acylation process and claims said to cover a displacement process.
6 We have found a document in the record discussing a restriction requirement between
7 acylation and displacement processes. See Exhibit 1046. However, Exhibit 1046 is
8 confusing to say the least. Exhibit 1046 consists of five pages. The first page discusses
9 claims 6-10 and 15-18, is dated 28 May 1991 and appears to be part of
10 application 07/462,492. The second page discusses claims 1-21, is dated 6 December
11 1976 and appears to be part of application 07/642,356. Page 3 discusses a restriction
12 requirement between different compounds and appears to be part of
13 application 07/642,356. The fourth page returns to application 07/462,492 and is the
14 page discussing a restriction between an acylation process and a displacement process.
15 The fifth page seems to be part of the file of application 07/462,492. In sum, it would
16 appear that the second and third pages should not have been included in the exhibit.
17 It appears that Examiner Rizzo made a restriction requirement between
18 claims 6-10 (Group A) calling for what is characterized as an acylation process and
19 claims 15-18 (Group B) calling for what is characterized as a displacement process. The
20 language of claims 6-10 and 15-18 has not been placed before us and therefore we are
21 unable to determine the precise metes and bounds of those claims or of the subject matter
22 involved in the Rizzo restriction. Our appellate reviewing court has observed that Ҥ 121
23 only applies to a restriction requirement that is documented by the PTO in enough clarity
18
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