The judicially-created “consonance” concept derives from the safe harbor’s “as a result of” requirement and specifies that the “line of demarcation between the ‘independent and distinct inventions’ that prompted the restriction requirement be maintained” in order for there to be a safe harbor against a subsequent double patenting invalidation. While distinct species may be considered to trigger a second restriction requirement on top of the original restriction when no generic claim is found allowable – and thus distinct species can serve to preserve consonance among related applications – a generic claim that overlaps the species of a related application serves to destroy the consonance requirement for the divisional application safe harbor against double patenting.
Background / Facts: The patents in this appeal relate to methods and devices for sealing a ‘vascular puncture.’ The patents all derive from a common parent application that was subject to a restriction and election of species requirement during prosecution. In particular, the Examiner demarcated six different claim groups: Group I, Species A-C, and Group II, Species A-C. The child patent being asserted includes claims to Group I, Species C and Group II, Species C, while the parent patent includes claims to Group I, Species B, and a sibling application includes claims that are generic to all species of Group II. That is, the asserted child overlaps the Group I claims in the parent, but not the particular species, as well as the Group II claims in the sibling, including the particular species. In the words of the Federal Circuit, “[t]he safe harbor provision [of the double patenting statute], not a model of clarity, is at the center of the parties’ dispute over the validity of the [asserted] patent.”
Issue(s): Whether the line of demarcation between the different inventions was honored as between the asserted child patent and (1) the parent patent and (2) the sibling patent.
Holding(s): Yes with respect to the parent; no with respect to the sibling. “[W]e hold that the restriction resulting from the election of species affected the line of demarcation. In particular, the first restriction separated Group I from Group II, and the second restriction operated on top of the first restriction to separate the Species.” Thus, “the two restrictions placed upon the []parent application together carved out Species A, B, and C,” and the claimed inventions in the asserted child “were different than the invention pursued in the []parent application” even though their restricted groups overlap. “Therefore, the line of demarcation was maintained in this respect.” With respect to the sibling patent, however, “since it pursued a claim generic to all of the Species in Group II,” it “therefore overlapped Group II, Species C found in the [asserted child] patent.” In sum, “[s]ince we conclude that the [asserted child] patent and the sibling patent did not maintain consonance, and therefore the safe harbor provision cannot apply, we hold that [the asserted] claims 7, 8, and 9 of the [asserted child] patent are invalid.”