Obviousness-Type Double Patenting Does Not Require Common Ownership Or A Complete Identity Of Inventors

In In re Hubbell, No. 11-1547 (Fed. Cir. Mar. 7, 2013), the Federal Circuit affirmed the Board’s decision upholding the examiner’s final rejection of the claims of U.S. Application No. 10/650,509 (“the ’509 application”) for obviousness-type double patenting over U.S. Patent No. 7,601,685 (“the ’685 patent”).

The ’509 application is directed to the field of tissue repair and regeneration, and more specifically to matrices containing bidomain peptides or proteins.  The ’509 application and ’685 patent share Jeffrey Hubbell and Jason Schense as common inventors, but do not have identical inventive entities or common owners or assignees.  During prosecution, the examiner found that claims of the ’685 patent were directed to a species of the invention claimed in the ’509 application and therefore anticipated the ’509 application claims.  The examiner rejected the ’509 application claims for obviousness-type double patenting over the ’685 patent, and the Board affirmed