In an ex parte reexamination, the claims of a patent owned by Janssen (the ‘471 patent) were held unpatentable under the doctrine of obviousness-type double patenting over the claims of other patents in the same family. Janssen filed the application that issued as the ‘471 patent as a CIP application claiming priority to two applications, the ‘413 application and the ‘406 application, after receiving a restriction requirement in the ‘413 application.
During the reexamination, Janssen tried to retroactively convert the ‘471 patent into a divisional application of the ‘413 application by canceling subject matter drawn from the ‘406 application and requesting that the ‘471 patent be amended to delete the benefit claim to the ‘406 application. The examiner entered the amendments for the purpose of reexamination but maintained the double patenting rejections on the basis that the safe-harbor provision of 35 U.S.C. §121 did not apply. The Board affirmed the examiner and Janssen appealed.
Did the Board err in affirming the examiner? (continue reading)
Summary by: Chris Wheeler
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