  United States Court of Appeals
      for the Federal Circuit
                ______________________

  IN RE JEFFREY HUBBELL, JASON SCHENSE,
       ANDREAS ZISCH, AND HEIKE HALL
             ______________________

                      2011-1547
                (Serial No. 10/650,509)
                ______________________

    Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
                  ______________________

                Decided: March 7, 2013
                ______________________

    RIVKA D. MONHEIT, Pabst Patent Group LLP, of Atlan-
ta, Georgia, argued for appellant. With him on the brief
was PATREA L. PABST.
    FRANCES M. LYNCH, Associate Solicitor, United States
Patent and Trademark Office, of Alexandria, Virginia,
argued for appellee. With him on the brief were RAYMOND
T. CHEN, Solicitor, and AMY J. NELSON, Associate Solici-
tor.
                ______________________
       Before NEWMAN, O’MALLEY, and WALLACH,
                  Circuit Judges.
 Opinion for the court filed by Circuit Judge O’MALLEY.
  Dissenting opinion filed by Circuit Judge NEWMAN.
2                                            IN RE HUBBELL

O’MALLEY, Circuit Judge.
     Jeffrey Hubbell, Jason Schense, Andreas Zisch, and
Heike Hall are the named inventors on U.S. Patent Appli-
cation No. 10/650,509 (“the ’509 application”). The exam-
iner rejected all of the pending claims – claims 1-5, 7, 9-
14, 16-22, 26-30, 34, and 35 – for obviousness-type double
patenting over several patents, including U.S. Patent No.
7,601,685 (“the ’685 patent”). Hubbell appeals from the
decision of the Board of Patent Appeals and Interferences
(“the Board”) affirming the examiner’s final rejection with
respect to the ’685 patent. Ex parte Jeffrey Hubbell,
Jason Schense, Andreas Zisch, and Heike Hall, No. 2010-
004497, 2011 Pat. App. LEXIS 19847 (B.P.A.I. May 20,
2011) (“Board Decision”). Because the Board did not err
in concluding that the pending claims were barred under
the doctrine of obviousness-type double patenting, we
affirm.
                      BACKGROUND
                A. FACTUAL BACKGROUND
    The ’509 application, entitled “Enzyme-Mediated Mod-
ification of Fibrin for Tissue Engineering,” was filed on
August 27, 2003. 1 The invention relates generally to the
field of tissue repair and regeneration, and more specifi-
cally to matrices containing bidomain peptides or pro-
teins. Claim 18, which the parties agree is representative

      1  The ’509 application is a continuation of Applica-
tion No. 10/024,918 (now abandoned), filed on December
18, 2001, which is a continuation-in-part of Application
No. 09/057,052, filed April 8, 1998, now U.S. Patent No.
6,331,422, which is a continuation of International Appli-
cation No. PCT/US98/06617, filed April 2, 1998, which
claims priority to U.S. Provisional Application Serial No.
60/042,143, filed April 3, 1997.
 IN RE HUBBELL                                           3
of the pending claims, recites “[a] bidomain protein or
peptide comprising a transglutaminase substrate domain
and a polypeptide growth factor.”
   The invention disclosed in the ’509 application was
based on research Jeffrey Hubbell and Jason Schense
conducted while Hubbell was a Professor of Chemical
Engineering at California Institute of Technology (“Cal-
Tech”) and Schense was obtaining his PhD at the same
institution. Two other CalTech researchers also assisted
Hubbell and are, thus, listed on the ’509 application as co-
inventors, Andreas Zich and Heike Hall. Because all of
the named inventors were affiliated with CalTech, the
’509 application is assigned to CalTech.
    Hubbell left CalTech and joined the faculty at Eid-
genossische Technische Hochschule Zurich (“ETHZ”) in
1998 – roughly five years before the ’509 application was
filed. The application that issued as the ’685 patent was
filed on December 17, 2002, and is based on research
Hubbell and Schense conducted at ETHZ. The ’685
patent, entitled “Growth Factor Modified Protein Matrices
for Tissue Engineering,” issued on October 13, 2009, lists
Jeffrey Hubbell, Jason Schense, and Shelly Sakiyama-
Elbert as inventors, and is jointly assigned to ETHZ and
Universitat Zurich.
   Claim 1 of the ’685 patent recites:
    A fusion protein, comprising:
       (i) a first protein domain;
       (ii) a second protein domain; and
       (iii) an enzymatic or hydrolytic cleavage site
       between the first and second domains;
   wherein the first domain is a growth factor select-
   ed from the group consisting of the platelet de-
   rived growth factor superfamily and the
4                                              IN RE HUBBELL

    transforming growth factor beta (TGF[beta]) su-
    perfamily;
    wherein the second domain is a crosslinking Fac-
    tor XIIIa substrate domain;
    wherein the enzymatic cleavage site is selected
    from the group consisting of proteolytic substrates
    and polysaccharide substrates, and
    wherein the hydrolytic cleavage site comprises a
    substrate with a linkage which undergoes hydrol-
    ysis by an acid or a base catalyzed reaction.
’685 Patent, col. 55, ll. 29-47.
   It is undisputed that, although the ’509 application
and the ’685 patent have two inventors in common –
Hubbell and Schense – they do not have identical in-
ventive entities and have neither common owners nor
common assignees. 2
                  B. PROCEDURAL HISTORY
    The ’509 application at issue on appeal is a continua-
tion of Application No. 10/024,918 (“the ’918 application”),
which was filed on December 18, 2001. The ’918 applica-
tion shares the same title and same inventors as the ’509
application on appeal, and was likewise assigned to
CalTech. During prosecution of the ’918 application, the
examiner rejected all of the pending claims based on
obviousness-type double patenting over U.S. Patent No.

    2   The application for the ’685 patent was a continua-
tion-in-part of Application No. 09/563,760, filed on May 1,
2000, now U.S. Patent No. 6,894,022, which is a continua-
tion-in-part of Application No. 09/141,153, filed on August
27, 1998, now abandoned. Accordingly, though the ’685
patent issued first, it is not available as prior art under 35
U.S.C. §§ 102 or 103 against the claims in the ’509 appli-
cation.
 IN RE HUBBELL                                           5
6,331,422 (“the ’422 patent”) and Application No.
09/695,466, which issued as U.S. Patent No. 6,607,740
(“the ’740 patent”) on August 19, 2003. Hubbell and
Schense are the named inventors on the ’422 and ’740
patents, and both patents were assigned to CalTech.
     In response to the examiner’s rejection, Hubbell sub-
mitted two terminal disclaimers, amended certain claims,
and added new claims. The examiner indicated that
claims 1-17 of the ’918 application were allowable, and
Hubbell cancelled the remaining claims. Although the
examiner issued a Notice of Allowance in June 2003,
Hubbell failed to pay the issue fee within the statutory
period, let the ’918 application go abandoned, and instead
filed the ’509 application on August 27, 2003.
    In a final Office Action dated October 5, 2007, the ex-
aminer rejected claims 1-5, 7, 9-14, 16-22, 26-30, 34, and
35 of the ’509 application for obviousness-type double
patenting over the ’422 and ’740 patents, the application
that issued as U.S. Patent No. 7,247,609 (“the ’609 pa-
tent”) to Lutolf, et al., and the application that issued as
the ’685 patent (Application No. 10/323,046). In relevant
part, the examiner found that the conflicting claims in the
’685 patent “are a species of the instantly claimed inven-
tion and as such are encompassed by the claimed inven-
tion and thus anticipate the claimed invention.” Board
Decision, 2011 Pat. App. LEXIS 19847, at *11. Hubbell
appealed the rejections to the Board.
     On appeal, the Board reversed the examiner’s obvi-
ousness-type double patenting rejection over the ’609
patent and affirmed the rejections over the ’422, ’740, and
’685 Patents. Because Hubbell indicated that he would
file terminal disclaimers with respect to the ’422 and ’740
patents, the Board summarily affirmed those rejections.
That portion of the Board’s decision is not at issue on
appeal.
6                                            IN RE HUBBELL

    Turning to the examiner’s rejection for obviousness-
type double patenting over certain claims in the ’685
patent, the Board agreed with the examiner that the
claims of the ’685 patent anticipate representative claim
18. Specifically, the Board found that claim 1 of the ’685
patent recites a protein that contains both of the features
required in rejected claim 18: “a transglutaminase sub-
strate domain (the crosslinking Factor XIIIa substrate
domain) and a domain encoding a growth factor.” Board
Decision, 2011 Pat. App. LEXIS 19847, at *13. The Board
also noted that claim 18’s use of the term “comprising”
allowed for inclusion of the additional elements recited in
claim 1 of the ’685 patent, including an enzymatic cleav-
age site not otherwise recited in claim 18. Accordingly,
the Board found the obviousness-type double patenting
rejection proper because the genus claim in the ’509
application was anticipated by issued claims directed to a
species falling within that genus.
     Next, the Board rejected Hubbell’s argument that
common ownership is a requirement for obviousness-type
double patenting. It began its analysis by citing the
Manual of Patent Examining Procedure (“MPEP”), which
provides that: “[d]ouble patenting may exist between an
issued patent and an application filed by the same in-
ventive entity, or by a different inventive entity having a
common inventor, and/or by a common assignee/owner.”
MPEP § 804(I)(A) (emphasis added). The Board further
relied on this court’s prior case law regarding obvious-
ness-type double patenting in which we recognized a
“concern over potential harassment of an infringer by
multiple assignees asserting essentially the same patent-
ed invention,” even where there was no common owner-
ship. Board Decision, 2011 Pat. App. LEXIS 19847, at
*15 (citing In re Van Ornum, 686 F.2d 937 (CCPA 1982)
and In re Fallaux, 564 F.3d 1313 (Fed. Cir. 2009)). Given
this concern, the Board concluded that common ownership
is not required and that obviousness-type double patent-
 IN RE HUBBELL                                           7
ing applied here because the earlier-issued ’685 patent
and the ’509 application share two common inventors.
Hubbell timely appealed that issue to this court, and we
have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
                       DISCUSSION
     Obviousness-type double patenting is a judicially-
created doctrine designed to “prevent claims in separate
applications or patents that do not recite the ‘same’ inven-
tion, but nonetheless claim inventions so alike that grant-
ing both exclusive rights would effectively extend the life
of patent protection.” Perricone v. Medicis Pharm. Corp.,
432 F.3d 1368, 1373 (Fed. Cir. 2005) (citation omitted). It
prohibits the issuance of claims in a second patent that
are “not patentably distinct from the claims of the first
patent.” In re Longi, 759 F.2d 887, 892 (Fed. Cir. 1985)
(citations omitted). A later patent claim “is not patenta-
bly distinct from an earlier claim if the later claim is
obvious over, or anticipated by, the earlier claim.” Eli
Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 968 (Fed.
Cir. 2001) (citations omitted).
    There are two justifications for obviousness-type dou-
ble patenting. The first is “to prevent unjustified time-
wise extension of the right to exclude granted by a patent
no matter how the extension is brought about.” Van
Ornum, 686 F.2d at 943-44 (quotation and citation omit-
ted). The second rationale is to prevent multiple in-
fringement suits by different assignees asserting
essentially the same patented invention. Fallaux, 564
F.3d at 1319 (recognizing that “harassment by multiple
assignees” provides “a second justification for obvious-
ness-type double patenting”); see also Chisum on Patents
§ 9.04[2][b][ii] (“The possibility of multiple suits against
an infringer by assignees of related patents has long been
recognized as one of the concerns behind the doctrine of
double patenting.”). Obviousness-type double patenting is
a question of law that we review de novo. In re Emert,
8                                           IN RE HUBBELL

124 F.3d 1458, 1460 (Fed. Cir. 1997). We review the
Board’s factual findings for substantial evidence. See In
re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000).
     On appeal, Hubbell does not dispute that Claim 1 of
the ’685 patent anticipates representative Claim 18 of the
’509 application. Instead, Hubbell argues that obvious-
ness-type double patenting should not apply where, as
here, an application and a conflicting patent share com-
mon inventors but do not have identical inventive enti-
ties, were never commonly owned, and are not subject to a
joint research agreement. In the alternative, if the court
finds that an obviousness-type double patenting rejection
is applicable, Hubbell argues that either he should be
allowed to file a terminal disclaimer as an equitable
measure or that this court should employ a two-way
obviousness analysis for the rejected claims.
    In response, the Director argues that: (1) whether the
application and patent were ever commonly owned is
immaterial to the policy of preventing harassment by
multiple assignees; (2) identity of inventors is not re-
quired where there is an overlap in the inventors;
(3) Hubbell has not established any grounds upon which
he should be allowed to file a terminal disclaimer; and
(4) Hubbell is not entitled to a two-way obviousness
analysis because he admitted that he partially is respon-
sible for the delay that caused the ’685 patent claims to
issue first. 3 For the reasons explained below, we agree
with the Director on each point.


    3  The Director also argues that Hubbell waived his
terminal disclaimer and two-way obviousness analysis
arguments by failing to raise them before the Board. In
response, Hubbell contends that these arguments relate
to the same issue presented to the Board: whether obvi-
ousness-type double patenting should apply in situations
where the application and conflicting patent are not
 IN RE HUBBELL                                           9
        A. OBVIOUSNESS-TYPE DOUBLE PATENTING
    The first issue on appeal is whether obviousness-type
double patenting applies where an application and a
conflicting patent have one or more inventors in common
but the inventive entities are not identical and the appli-
cations were never commonly owned. Although Hubbell
argues that this issue is one of first impression, the Board
found that: (1) the MPEP specifically contemplates appli-
cation of obviousness-type double patenting in these
circumstances; and (2) this court’s prior case law supports
application of obviousness-type double patenting in in-
stances where there is no common ownership. We agree
with the Board.
    First, as noted, the MPEP provides that obviousness-
type double patenting may exist between an issued patent
and an application filed by “the same inventive entity, or
by a different inventive entity having a common inventor,
and/or by a common assignee/owner.” MPEP § 804(I)(A)
(emphasis added). Although the MPEP is not binding on
this court, we can take judicial notice of this provision to
the extent it does not conflict with statutory text. Enzo
Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 964 (Fed.
Cir. 2002) (stating that the PTO Guidelines governing its
internal practice and the MPEP “are not binding on this
court, but may be given judicial notice to the extent they
do not conflict with the statute”). As discussed below,
moreover, the MPEP standard is consistent with the



commonly owned. Hubbell further argues that, since he
urges this court to permit filing of a terminal disclaimer
or application of the two-way test as an equitable meas-
ure, “[n]either of these remedies could have been granted
by the Board.” Appellants’ Reply 13. Regardless of
whether Hubbell waived these arguments, as discussed
below, we find them to be without merit.
10                                           IN RE HUBBELL

rationale we have used to support application of obvious-
ness-type double patenting rejections.
     Hubbell’s primary argument is that obviousness-type
double patenting should never be applied in the absence
of common ownership of the applications at issue. We
have already rejected that contention. In Van Ornum, for
example, our predecessor court affirmed an obviousness-
type double patenting rejection over a patent with a
common inventor, despite a lack of common ownership.
In that case, as here, the claims in the application were
generic to the species claims in the patents on which the
double patenting rejection was based. Van Ornum, 686
F.2d at 938. Although the application and the patents
shared a common inventive entity, the inventors assigned
one of the patents to General Motors and assigned the
second patent, as well as the application at issue, to
Rockcor, Inc. Id. at 938-39. Because the application’s
generic claims “disclosed no additional invention or dis-
covery other than what ha[d] already been claimed” in the
prior patents, the court concluded that the double patent-
ing rejection was “fully justified.” Id. at 944. The court
further found that, because the application and conflicting
patents were not commonly owned, the applicants could
not file a terminal disclaimer to overcome the rejection.
See id. at 944-48 (approving the common ownership
requirement for terminal disclaimers set forth in 37
C.F.R. § 1.321). In reaching this conclusion, the court
recognized the importance of preventing harassment of an
alleged infringer by multiple assignees asserting essen-
tially the same patented invention.
    Likewise, in Fallaux, this court reaffirmed the multi-
ple assignee harassment rationale and applied it to a
situation where, as here, the patents were related to the
application only by way of a common inventor. See
Fallaux, 564 F.3d at 1315 (“The reference patents for the
double patenting rejection on appeal – the Vogels patents
– are related to the Fallaux application only by way of a
 IN RE HUBBELL                                          11
single common inventor – Abraham Bout.”). While this
court noted that neither party raised the issue of whether
a patent may be used as a reference for an obviousness-
type double patenting rejection where it shares only a
common inventor with the application, and cautioned that
the “opinion should not be read to decide or endorse the
PTO’s view on this issue,” it concluded that the harass-
ment justification for obviousness-type double patenting
is “particularly pertinent” in such circumstances. Id. at
1315 n.1, 1319. The court also pointed out that the lack of
common ownership in that case “was of the applicant’s
creation as through assignment it allowed ownership of
the applications to be divided among different entities.”
Id. at 1319.
     On appeal, Hubbell argues that Van Ornum and
Fallaux are distinguishable because in those cases, unlike
here, the applications at issue were once commonly
owned. Hubbell also contends that Van Ornum should be
limited to its facts and that both Van Ornum and Fallaux
“should be read as standing for the proposition that in
situations where . . . the complaining party is ‘responsible
for’ the divided assignment, issuance of the second patent
is ‘impermissible and barred by the public policy of har-
assment by multiple assignees.’” Appellants’ Br. 15
(citations omitted). According to Hubbell, because Cal-
Tech did not control the ownership of the ’685 patent and
was not responsible for the divided assignment, obvious-
ness-type double patenting should not apply. Hubbell’s
arguments are not well-taken.
    It is undisputed that the ’685 patent is assigned to
ETHZ and Universitat Zurich, whereas the ’509 applica-
tion is assigned to CalTech. While Hubbell is correct that
CalTech was not responsible for the bifurcated assign-
ment, the fact remains that, if Hubbell’s rejected applica-
tion claims were to issue, the potential for harassment by
multiple assignees would exist because an infringer of
claim 1 of the ’685 patent would also infringe at least
12                                            IN RE HUBBELL

rejected claim 18. As such, there is a risk that a potential
infringer could be subject to suit from both CalTech and
ETHZ and Universitat Zurich under their respective
patents. The fact that Hubbell controlled the assignment
by moving from one institution to another does not alter
this analysis.
     Although Hubbell attempts to distinguish Van Ornum
and Fallaux on grounds that the applications involved in
those cases were once commonly owned, this distinction
does not alleviate the underlying harassment concerns
here. As the Director points out, the “possibility of har-
assment by multiple assignees exists when issued patents
lack common ownership. Thus, whether the applications
that led to the issued patents were ever commonly owned
is irrelevant.” Appellee’s Br. 16. And, as we recognized in
Fallaux, the harassment justification is “particularly
pertinent” in cases where, as here, the application and the
conflicting patent are not commonly owned.
    Based on the foregoing, although Hubbell argues that
we should create a specific exception barring application
of obviousness-type double patenting in instances where
the conflicting claims share only common inventors,
rather than common ownership, we see no valid basis for
doing so. Because it is undisputed that an infringer of the
’685 patent would also infringe the ’509 application, the
multiple assignee harassment justification adopted in
Van Ornum and reaffirmed in Fallaux applies here,
despite the lack of common ownership.
    While not the thrust of his contentions on appeal,
Hubbell also seems to argue that obviousness-type double
patenting should not apply where the overlap in inventor-
ship is not complete, i.e., where the inventive entities are
not identical in all respects. Here, Hubbell was the first
named inventor on both the ’590 application and the ’685
patent and Schense was the second. The ’509 had two
other named inventors and the ’685 patent had one. It is
 IN RE HUBBELL                                          13
undisputed that this overlap in inventorship is precisely
the type of relationship that would give rise to double
patenting under the MPEP. Hubbell does not explain
why the MPEP is wrong to treat cases, like his, where the
overlap in inventorship is substantial any differently than
cases where the overlap is complete. We too can find no
reasoned basis to differentiate between cases involving
identical “inventive entities” and those where the in-
ventive entities are almost identical when assessing
obviousness-type double patenting rejections. Indeed,
Fallaux drew no such distinction and endorsed an obvi-
ousness-type double patenting rejection despite the ab-
sence of identity among inventors. 4
    For these reasons, we reject Hubbell’s request that we
insist upon a complete identity of inventors or common
ownership as a prerequisite to an obviousness-type double
patenting rejection and find the Board’s rejection to have
been proper on the facts presented here.
                 B. TERMINAL DISCLAIMER
     In the alternative, Hubbell argues that, if obvious-
ness-type double patenting does apply, we should author-
ize him to file a terminal disclaimer and thus avoid any
concern regarding undue extension of the rights granted
in the ’685 patent. As a general rule, a terminal disclaim-
er filed to overcome an obviousness-type double patenting
rejection is effective only where the application and
conflicting patent are commonly owned. See Fallaux, 564
F.3d at 1319 (“If the Fallaux application and the Vogels
patents were commonly owned, the terminal disclaimer
filed in this case would have been effective to overcome
the double patenting rejection.”). Indeed, 37 C.F.R.

    4   On this point, we are unpersuaded by the dissents’
citation to an outdated version of the MPEP or to cases
which discuss the concept of an inventive entity in entire-
ly different contexts.
14                                           IN RE HUBBELL

§ 1.321(c)(3) specifically provides that a terminal dis-
claimer “filed to obviate judicially created double patent-
ing in a patent application” must include “a provision that
any patent granted on that application . . . shall be en-
forceable only for and during such period that said patent
is commonly owned with the application or patent which
formed the basis for the judicially created double patent-
ing.” 37 C.F.R. § 1.321(c)(3) (emphasis added).
     Recognizing that there is neither common ownership
nor a common assignee here, Hubbell points to the Coop-
erative Research and Technology Enhancement Act of
2004 (“the CREATE Act”), which amended 35 U.S.C.
§ 103(c) to provide that otherwise unrelated persons can
be treated as common owners under the statute if:
(1) they are parties to a joint research agreement that was
in effect on or before the claimed invention was made;
(2) the claimed invention was made as a result of activi-
ties undertaken within the scope of the joint research
agreement; and (3) “the application for patent for the
claimed invention discloses or is amended to disclose the
names of the parties to the joint research agreement.” 35
U.S.C. § 103(c)(2)(A)-(C).
    Because the ’509 application and the ’685 patent are
not commonly owned and there is no joint research
agreement between the assignees, Hubbell’s reliance on
the CREATE Act is misplaced. Although Hubbell argues
that this court should ignore the joint research agreement
requirement and nonetheless permit the filing of a termi-
nal disclaimer, there is no statutory basis for doing so,
and we decline Hubbell’s invitation to rewrite the statuto-
ry text by creating a new equitable right to resort to
terminal disclaimers. We conclude that, because Hubbell
does not qualify for a terminal disclaimer under the
statute, he is not entitled to file one as an equitable
measure.
 IN RE HUBBELL                                           15
           C. TWO-WAY OBVIOUSNESS ANALYSIS
    Finally, Hubbell argues that the rejected claims
should be reconsidered under a two-way obviousness
analysis. As a general rule, a “one-way” test applies to
determine obviousness-type double patenting. In re Berg,
140 F.3d 1428, 1432 (Fed. Cir. 1998). Under that test,
“the examiner asks whether the application claims are
obvious over the patent claims.” Id. In certain circum-
stances, however, a two-way test may apply, wherein the
examiner “also asks whether the patent claims are obvi-
ous over the application claims. If not, the application
claims later may be allowed.” Id.
    The two-way test, which is “a narrow exception to the
general rule of the one-way test,” arose out of the concern
to:
   prevent rejections for obviousness-type double pa-
   tenting when the applicants filed first for a basic
   invention and later for an improvement, but,
   through no fault of the applicants, the PTO decid-
   ed the applications in the reverse order of filing,
   rejecting the basic application although it would
   have been allowed if the applications had been de-
   cided in the order of their filing.
Id. We have explained that the two-way test is appropri-
ate only in the “unusual circumstance” where “the PTO is
solely responsible for the delay in causing the second-filed
application to issue prior to the first.” Id. at 1437 (em-
phasis added). Whether a one-way or two-way analysis
applies is a question of law that we review without defer-
ence. In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371,
1375 (Fed. Cir. 2008) (citation omitted).
    On appeal, Hubbell argues that he is entitled to a
two-way obviousness analysis because: (1) the claims in
the ’509 application and the claims in the ’685 patent
could not have been filed together; and (2) “on a balance,
16                                            IN RE HUBBELL

the PTO was responsible for the claims in the ’685 patent
issuing before the present claims.” Appellants’ Br. 26. In
response, the Director argues that a two-way analysis is
not applicable because Hubbell cannot establish that the
PTO is solely responsible for any delays associated with
the claims on appeal. We again agree with the Board.
     First, during the hearing before the Board, counsel
specifically conceded that Hubbell was partially responsi-
ble for the delay that caused the ’685 patent to issue
before the application claims. J.A. 313, ll. 11-12 (MS.
MONHEIT: “So the PTO shares responsibility. I’m not
saying that we’re blameless. I’m just saying that there is
shared responsibility.”). 5 Counsel also conceded that
Hubbell could have presented the claims at issue on
appeal in December 2001, but failed to do so until August
2003. See J.A. 312, ll. 19-24 (“JUDGE FREDMAN: “This
isn’t a situation where the PTO prevented you from
presenting these claims way back in 1998 or whatever it
would’ve been when you had the first case.”             MS.
MONHEIT: “The earliest point that we could have pre-
sented [the claims on appeal] is when we filed that CIP,
which is in 2001.”). This admission further supports the
conclusion that the PTO was not solely responsible for the
delay. See Eli Lilly, 251 F.3d at 969 n. 7 (recognizing that
an admission “that the claim[s] could have been presented
earlier . . . indicates that the delay was not solely caused
by the PTO”).
   Finally, the record reveals that, in June 2003, the ex-
aminer allowed claims very similar to those at issue on
appeal. Rather than permitting those claims to issue,


     5 Likewise, in his briefing on appeal, Hubbell admit-
ted shared responsibility. See Appellants’ Br. 26 (stating
that, “on a balance, the PTO was responsible for the
claims in the ’685 patent issuing before the present
claims”) (emphasis added)).
 IN RE HUBBELL                                           17
Hubbell failed to pay the issue fee, let the ’918 application
claims go abandoned, and filed the ’509 application in
August 2003. 6 These prosecution choices resulted in the
foreseeable consequence that the ’685 patent issued before
the application claims on appeal. Given these circum-
stances, and because it is undisputed that the PTO was
not solely responsible for the delay, Hubbell is not entitled
to a two-way obviousness analysis. 7


    6     During oral argument, counsel for Hubbell ex-
plained that CalTech – the assignee of the ’918 applica-
tion – intentionally let the claims go abandoned. See Oral
Argument          at        26:30,       available        at
http://www.cafc.uscourts.gov/oral-argument-
recordings/2011-1547/all (“The claims required recombi-
nantly producing the fusion protein . . . when the claims
were granted CalTech looked at those claims and said
‘you know what, we disclosed that it doesn’t have to be
limited to recombinantly producing it. Let’s refile it; we’ll
get it allowed quickly.’”).
    7   Hubbell also argues that this court should extend
its reasoning from In re Braat, 937 F.2d 589 (Fed. Cir.
1991), and should apply the two-way test as an equitable
measure. In Braat, we recognized that “basic and im-
provement patents should not be penalized by the rate of
progress of the applications through the PTO, a matter
over which the applicant does not have complete control.”
Id. at 593. In that case, we noted that: (1) the common
assignee could not have filed the rejected application
claims with the patent claims because they had different
inventive entities; and (2) it was not the assignee’s fault
that the patent claims issued first. Id. at 594. As the
Director points out, Braat “stands for the general proposi-
tion that the two-way test applies when a later-filed
improvement application issues before an earlier-filed
basic application due entirely to the USPTO.” Appellee’s
Br. 21 (citing Berg, 140 F.3d at 1432-34; Braat, 937 F.2d
18                                           IN RE HUBBELL

                       CONCLUSION
    For the foregoing reasons, and because we find that
Hubbell’s remaining arguments are without merit, we
conclude that the Board properly affirmed the examiner’s
decision rejecting the pending application claims based on
obviousness-type double patenting in view of the ’685
patent. Accordingly, the Board’s decision is affirmed.


                      AFFIRMED




at 593-94). In Berg, moreover, we noted that, “even in a
case where the inventions could not have been filed in a
single application, if the applicant thereafter controlled
the respective rates of prosecution to cause the species or
improvement claims to issue prior to the genus or basic
invention claims . . . such applicant seems not to be enti-
tled to the two-way test under settled case law.” 140 F.3d
at 1434 n.6 (citation omitted). Given that Hubbell has
conceded partial responsibility for the delay, his reliance
on Braat is misplaced.
  United States Court of Appeals
      for the Federal Circuit
                 ______________________

  IN RE JEFFREY HUBBELL, JASON SCHENSE,
       ANDREAS ZISCH, AND HEIKE HALL
             ______________________

                       2011-1547
                 (Serial No. 10/650,509)
                 ______________________

    Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
                 ______________________
NEWMAN, Circuit Judge, dissenting.
    In accordance with the law of double patenting, dou-
ble patenting does not apply when the application and
patent are of separate ownership and have separate
inventive entities. In such situation the appropriate
examination path is on the merits of the invention, or
through the interference or derivation procedures, or
other standard protocol as may apply in the particular
situation. The technology here appears to involve generic
and species inventions; such separate developments are
not unusual, and there exists extensive precedent to guide
patentability. This court need not create a new protocol
wherein the contributions of distinct entities and separate
ownership are rejected for “double patenting” instead of
examined under the established rules.
   The court today not only finds “double patenting”
when there is neither common inventorship nor common
ownership, but having so found withholds the standard
2                                             IN RE HUBBELL

remedy of the terminal disclaimer, and simply denies the
application. This novel ruling is contrary to statute and
precedent, with no policy justification for changing the
law. I respectfully dissent.
                        DISCUSSION
    In the entire body of precedent relating to rejection on
the ground of double patenting, the rejected patents or
applications were of common inventorship or common
ownership. This is illustrated in early examples such as
Miller v. Eagle Manufacturing, 151 U.S. 186 (1894),
where the inventor had divided his patent application into
two separate applications that issued as patents, and the
Court held that the second patent could only be justified if
the later-issued claim “is clearly distinct from and inde-
pendent of, one previously patented.” Id. at 199–200.
Earlier, in James v. Campbell, 104 U.S. (14 Otto.) 356,
382 (1882), the Court stated that “[i]t is hardly necessary
to remark that the patentee could not include in a subse-
quent patent any invention embraced or described in a
prior one granted to himself, any more than he could an
invention embraced or described in a prior patent granted
to a third person.”
    The Court of Customs and Patent Appeals applied
this precedent in cases such as In re Barge, 96 F.2d 314,
316 (CCPA 1938), where the court explained that “an
applicant . . . is not entitled to two patents if his disclo-
sure in the later application is not inventive over that for
which he has already received a patent.” The concept was
extended to commonly-owned patents, as in In re
Borcherdt, 197 F.2d 550, 551 (CCPA 1952) (“two patents
may not issue for different forms or species of the same
invention when they are non-inventively different” and
“the same principle applies to patents of different inven-
tors granted to a common assignee”); see also In re New-
ton, 414 F.2d 1400 (CCPA 1969); In re Bowers, 359 F.2d
886 (CCPA 1966).
 IN RE HUBBELL                                             3
    The CCPA referred to the policy of avoiding extension
of the term of exclusivity, and also recognized reasons
such as “possible harassment by multiple assignees,
inconvenience to the Patent Office, and the possibility
that one might avoid the effect of file wrapper estoppel.”
In re Robeson, 331 F.2d 610, 615 (CCPA 1964). Discuss-
ing the possibility of harassment, on which my colleagues
on this panel place emphasis, the court stated:
   [Issuance of multiple patents] is a very common
   situation existing with respect to genus and spe-
   cies, dominant and subservient, and ‘overlapping’
   patents, whenever there are unobvious differ-
   ences, all granted in strict accordance with law
   and presumed valid. Yet we do not see the courts
   bogged down with harassment suits. In those ra-
   re instances where there is a situation which a
   court can be persuaded amounts to harassment, it
   has means for dealing with it by inflicting attor-
   ney’s fees. This can be a powerful deterrent.
In re Jentoft, 392 F.2d 633, 641 (CCPA 1968); see In re
Eckel, 393 F.2d 848, 857 (CCPA 1968).
    The CCPA elaborated on the definition of inventive
entity as a predicate for double patenting. In In re Land
and Rogers, 368 F.2d 866, 879 (CCPA 1966) the court
stated:
   The question here is not merely whether A or B,
   individually, is or is not “another” to A & B jointly
   on a theory of “different legal entities.” Of course
   they are different “entities” in the sense that an
   invention made jointly by A & B cannot be the
   sole invention of A or B and vice versa, and cer-
   tain legal consequences flow from such fact, such
   as who must apply for patent.
4                                             IN RE HUBBELL

The Manual of Patenting Examining Procedure has also
defined “inventive entity” for purposes of the law of dou-
ble patenting:
    The inventive entity is the sole inventor or the
    joint inventors listed on a patent or patent appli-
    cation. A sole inventor in one application and
    joint inventors in another application cannot con-
    stitute a single or the same entity, even if the sole
    inventor is one of the joint inventors. Likewise,
    two sets of joint inventors do not constitute a sin-
    gle inventive entity if any individual inventor is
    included in one set who is not also included in the
    other set.
MPEP §804 (4th ed. 1979). The Federal Circuit observed
in In re Kaplan, 789 F.2d 1574 (Fed. Cir. 1986), that: “It is
a given, of course, that a sole inventor and joint inventors
including the sole inventor are separate ‘legal entities,’ a
legal proposition from which certain legal consequences
flow.”
    The law of double patenting evolved in various factual
situations, but never departed from the requirement of
either common inventorship or common ownership, and
never departed from the available remedy of terminal
disclaimer for obviousness-type double patenting. This
remedy draws on the 1952 codification that any patentee
or applicant may “disclaim or dedicate to the public the
entire term, or any terminal part of the term, of the
patent granted or to be granted,” 35 U.S.C. §253. As
explained by P.J. Federico, Examiner-in-Chief of the
United States Patent Office and a draftsman of the 1952
Act:
    No specific reason for this provision appears in
    the printed record, but its proponents contemplat-
    ed that it might be effective in some instances, in
    combating a defense of double patenting, to per-
    mit the patentee to cut back the term of a later is-
 IN RE HUBBELL                                           5
   sued patent so as to expire at the same time as
   the earlier issued patent and thus eliminate any
   charge of extension of monopoly.
35 U.S.C.A. 1, 49 (1954), reprinted at 75 J. Pat. & Trade-
mark Off. Soc’y 161 (1993).
    In In re Griswold, 365 F.2d 834 (CCPA 1966), the
CCPA reviewed a terminal disclaimer that included a
provision that the second patent would “be enforceable
only for and during such period that the legal title to said
patent and to such right to recover shall be the same
respectively as” the first patent. Id. at 840 n.5. The
CCPA remarked that such a provision would eliminate
any possibility of harassment if the two patents later
came into separate hands, and the Patent Office duly
amended its Rule 321 to require that terminal disclaimers
contain such a “non-alienation” agreement. 37 C.F.R.
§1.321(b).
    The CCPA upheld this authority to require non-
alienation in In re Van Ornum, 686 F.2d 937, 948 (CCPA
1982), where the inventors of the patent and the applica-
tion had already assigned rights to different companies;
the court held that there was double patenting, for there
was a common inventive entity, but that the remedy of
terminal disclaimer was not available because the patent-
ee had purposely divided ownership in the patent and
application and could not comply with the non-alienation
requirement. My colleagues state that Van Ornum sup-
ports their application of double patenting in this case; if
anything, Van Ornum supports the contrary. In In re
Longi, 759 F.2d 887, 895 (Fed. Cir. 1985), this court
referred to the “important legislative history” of the
enactment in 1984 of §103(c)(1) relating to commonly
owned applications of different inventive entities, where-
by the applications are subject to terminal disclaimer in
order to avoid unwarranted extension of the term of
patent protection:
6                                             IN RE HUBBELL

    The Committee expects that the Patent and
    Trademark Office will reinstitute in appropriate
    circumstances the practice of rejecting claims in
    commonly owned applications of different in-
    ventive entities on the ground of double patenting.
    This will be necessary in order to prevent an or-
    ganization from obtaining two or more patents
    with different expiration dates covering nearly
    identical subject matter.
Patent Law Amendment Act of 1984, 130 Cong. Rec.
H10,527 (1984). The legislative record explained that
when the ownership is the same, whether or not the
inventorship is different, rejection on the ground of double
patenting can be overcome “by disclaiming the terminal
portion of the term of the later patent, thereby eliminat-
ing the problem of extending patent life.” Id. The panel
majority misapplies §103(c)(1), for the statute is directed
to situations of common ownership; it does not provide
that when there is not common ownership there can be no
patent.
     Until today, there has been no departure from the
principles of the law of double patenting. In the case at
bar, neither a common inventive entity not common
ownership is present. The application in suit is assigned
to the California Institute of Technology; and is for a
protein or peptide with a transglutaminase substrate and
a polypeptide growth factor. It has four inventors that
include Hubbell and Schense; the provisional application's
filing date is April 3, 1997. In 1998 Hubbell and Schense
joined the faculty at the Eidgenossiche Technische
Hochschule Zurich (ETHZ) and the Universitat Zurich,
and a parent application directed to a species within the
genus was filed on August 27, 1998 and assigned to
ETHZ, with three inventors that include Hubbell and
Schense.
 IN RE HUBBELL                                           7
    The panel majority does not dispute that these are dif-
ferent inventive entities and that there is not common
ownership. However, the court rules that obviousness-
type double patenting applies. If there indeed is obvious-
ness-type double patenting, then a terminal disclaimer is
necessarily available. However, the court rules that a
terminal disclaimer is not available because there is not
common ownership. Yet if there is not common ownership
or common inventorship, there cannot be double patent-
ing. On this circularity, the court denies the CalTech
application on the ground of double patenting.
    The panel majority miscites In re Fallaux, 564 F.3d
1313 (Fed. Cir. 2009), for that ruling disclaimed the
holding for which its authority is now asserted. The
Fallaux court referred to a provision in the MPEP and
stated that “This opinion should not be read to decide or
endorse the PTO's view on this issue.” Id. at 1316 n.1.
My colleagues now cite this footnote as authority for the
holding it declined to make.
    The CalTech application and the ETHZ patent were
never commonly owned, unlike those of Fallaux and Van
Ornum, where ownership was divided during pendency.
Genus and species patents are not unusual; there is no
suggestion of any attempt to “game” the system. 1 From
the court's flawed ruling on incorrect law, I respectfully
dissent.




      1     CalTech has asked for equitable relief in the
form of authorization to file a terminal disclaimer; I would
not foreclose such a possibility.
