Ex parte Baurin

When an examiner rejects claims for obviousness-type double patenting over a reference patent that has a later patent term filing date and later expiration, and the claims on appeal are admittedly obvious variants of the reference claims, the Board cannot reverse on the ground that no unjustified timewise term extension is presented, because binding Federal Circuit precedent (Fallaux, Hubbell, Cellect) recognizes the risk of separate ownership and multiple-assignee harassment as an independent rationale. The Appeals Review Panel therefore reversed the Board and sustained the OTDP rejections, while stating that, were the Office not bound, standalone anti-harassment should generally not support OTDP rejections during examination. No prior precedential Board decision is named; the ARP rejects the Board's own panel decisions (Appeal Decision and Rehearing Decision) that treated anti-harassment as immaterial or only supporting when term extension is absent, and holds that Allergan's first-filed, first-issued, later-expiring exception does not apply here. For examiners, rejections may rest on the separate-ownership and anti-harassment rationale alone, even where the reference expires later than any patent on the application and the application's term cannot extend beyond it. For applicants, an argument that the reference is later-filed and later-expiring will not defeat an OTDP rejection; the practical route is a terminal disclaimer with the common-ownership provision of 37 C.F.R. § 1.321(c), though the ARP flagged that this can be a trap for split-ownership applicants. The Board relied on Fallaux, 564 F.3d 1313, Hubbell, 709 F.3d 1140, In re Van Ornum, 686 F.2d 937, and Cellect, 81 F.4th 1216, and distinguished Allergan, 111 F.4th 1358, and Novartis. LEGAL TEST OR STANDARD: Two recognized rationales for OTDP: (1) preventing unjustified timewise extension of the right to exclude, and (2) preventing multiple infringement suits and harassment by different assignees (the anti-harassment rationale). Either can support a rejection under binding Federal Circuit precedent. Allergan's exception applies only if (1) the application and reference are in the same family and have the same patent term filing date, and (2) the claims under examination are first-filed, first-issued, and later-expiring. TRIGGERING FACTS: The claims on appeal were undisputedly obvious variants of the claims of the reference '922 patent. The application had an earlier patent term filing date (March 28, 2012) and could not expire after March 28, 2032, while the '922 patent had a later patent term filing date (April 13, 2017) and expired in 2037. The application and patent were commonly owned at present, shared some inventors, and were in different families. Allergan did not apply because the application was not first-filed, not first-issued, and had a different patent term filing date. KEY QUOTE: "We conclude that the Board erred in dismissing the anti-harassment rationale as inadequate to support the Examiner’s OTDP rejections." (slip op. at 17) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The ARP reverses the Board's Appeal Decision and Rehearing Decision in this appeal, follows In re Fallaux, 564 F.3d 1313 (Fed. Cir. 2009), In re Hubbell, 709 F.3d 1140 (Fed. Cir. 2013), and In re Cellect, 81 F.4th 1216 (Fed. Cir. 2023), and distinguishes Allergan USA, Inc. v. MSN Laboratories Private Ltd., 111 F.4th 1358 (Fed. Cir. 2024). It cites Ex parte Baumeister, 2025 WL 3515282 (PTAB Nov. 20, 2025), as consistent. PRACTICE TIP: Do not argue in an appeal brief that a later-filed, later-expiring reference cannot support OTDP because the application's term cannot extend past it; the Office will treat anti-harassment as a sufficient standalone basis. Instead, contest whether the claims are patentably distinct, or plan for a terminal disclaimer with the 37 C.F.R. § 1.321(c) common-ownership provision, and preserve the argument for Federal Circuit review.