Dr. Richard Chinn reports:

Obviousness-type double patenting rejection affirmed in continuation-in-part application even though a restriction requirement was issued in a parent application.  The Fed. Cir. (In re Janssen Biotech) affirmed the Board’s decision that Janssen’s CIP application, claiming the benefit of priority to two earlier filed application, was not retroactively afforded safe harbor as a divisional application under 35 USC 121, in a reexamination proceeding. Following a strict application of 121, patents issued on CIP or continuations applications are not protected under the safe harbor.  After issuance of the patent based on the CIP containing new matter, the patent is bared from safe-harbor protections. Patentee’s argument that they never enjoyed the benefit of both applications to which priority is claimed was dismissed as the CIP was the basis for more than 30 issued patents, the validity of which could not be determined without reopening examination of each. The Fed. Cir. affirmed the Board’s “one-way test” of obviousness-type double patenting, partly in view of patentee’s delay 1) having filed a preliminary amendment; 2) having filed a Notice of Appeal waiting 1 year to make a 1.129(a) submission; 3) waiting more than three years to cancel rejected claims to gain allowance; and 4) adding claims from another application after issuance of a final rejection.