Appeals 2006-1443 and 2006-1465
Reexamination Control Nos. 90/004,950 and 90/005,200
1 and detail to show consonance. The restriction requirement documentation must identify
2 the scope of the distinct inventions that the PTO has restricted ***.” Geneva
3 Pharmaceuticals, Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1382, 68 USPQ2d 1865,
4 1872 (Fed. Cir. 2003). While we are not dealing with a § 121 situation here, Appellants
5 having expressly declined to place any reliance on § 121, we believe the Federal Circuit’s
6 Geneva observations are applicable here where Appellants in part bottom their case based
7 on what they characterize as a restriction requirement albeit a restriction requirement in a
8 related, but different, case. Having failed to favor us with a copy of the claims said to
9 have been restricted by Examiner Rizzo, we are unable to determine the precise nature of
10 that restriction requirement or the weight, if any, to be given to the Rizzo restriction
11 requirement.
12 In our view, the Rizzo restriction requirement does not give much aid and comfort
13 to Appellants. They have not sufficiently established what the restriction requirement
14 was actually about, and in particular what the displacement process was all about. In
15 short, Appellants’ restriction proofs are not bottomed on sufficient and credible evidence.
16 6.
17 Appellants have an alternate theory. According to Appellants, we should find that
18 there are two ‘independent and distinct” processes that can be used to make the cephems
19 of Ochiai ‘606.
20 Appellants’ theory is based on the declaration testimony of Dr. Wuest. As noted
21 earlier, the Examiner was not impressed with Dr. Wuest’s testimony.
22 According to Appellants, the Examiner has to believe Dr. Wuest’s testimony
23 because there is no opposing evidence. Wrong! The Examiner is entitled to assess
19
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