Docket No. 2011-1547 (Serial No. 10/650,509)
NEWMAN, O’MALLEY, WALLACH
March 7, 2013
Brief summary: Board decision regarding double-patenting rejection of Hubbell’s claims was affirmed.
Summary: Hubbell’s claims (Ser. No. 10/650,509) related to peptide-protein matrices for tissue repair and regeneration were rejected for obviousness-type double patenting over U.S. Pat. No. 7,601,685 (and other patents). Hubbell appealed BPAI affirmation of the examiner’s rejection over the ‘685 patent. The BPAI agreed with the examiner that the claims of the ‘685 patent anticipated Hubble’s representative claim 18 (“comprising…a transglutaminase substrate domain…and a domain encoding a growth factor”) as a species thereof. The ‘685 patent and Hubble’s application share some inventors but are not commonly owned (although the underlying application of the ‘685 patent and Hubble’s application were apparently commonly owned at some point (see, however, Judge Newman’s dissent)). The FC panel first concluded that the prior common ownership of the applications was not relevant as the risk of infringer harrassment by multiple parties was present (citing MPEP § 804(I)(A), In re Van Ornum (CCPA 1982), and In re Fallaux (FC 2009)). And Hubble’s request to file a terminal disclaimer for the ‘685 patent was rejected because the ‘685 patent and the application are not commonly owned (In re Fallaux (FC 2009)) and there is no joint research agreement (e.g., considering the CREATE Act). Hubble also argued that the rejected claims should be examined under a two-way obviousness analysis. Under the one-way test to determine obviousness-type double patenting, “the examiner asks whether the application claims are obvious over the patent claims” (In re Berg, FC 1998). As explained in the opinion, the two-way test is “a narrow exception to the general rule of the one-way test” (In re Berg) arose in order to prevent rejections of first-filed “basic invention” claims over later-filed but first-granted “improvement” claims (e.g., “the PTO is solely responsible for the delay” in prosecuting the first-filed applicaiton). Here, however, the BPAI concluded, and the FC panel agreed, that “Hubbell was partially responsible for the delay” (e.g., did not pay the issue fee of an earlier Hubbell application and instead filed the application at issue here). Thus, the BPAI decision on this point was also affirmed. Judge Newman dissented because, at least in part, neither a common inventive entity (as defined by MPEP § 804 (4th Ed. 1979)) nor common ownership existed and, “if there is not common ownership or common inventorship, there cannot be double patenting.”