Federal Circuit disposition — 17-1478

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: PAUL CHAPLIN, PAUL HOWLEY,
CHRISTINE MEISINGER-HENSCHEL,
Appellants
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2017-1478
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 13/588,217.
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Decided: February 12, 2018
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SALVATORE J OSEPH A RRIGO, Arrigo, Lee & Guttman
LLP, Washington, DC, argued for appellants. Also repre-
sented by HARRY J OEL G UTTMAN, SCOTT M. K. L EE ; L I
WESTERLUND, Bavarian Nordic, Inc., Redwood City, CA.
K AKOLI CAPRIHAN, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
argued for appellee Andrei Iancu. Also represented by
N ATHAN K. K ELLEY , THOMAS W. K RAUSE, F RANCES L YNCH .
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Before P ROST , Chief Judge, N EWMAN, and MOORE, Circuit
Judges.

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IN RE: CHAPLIN 2
MOORE, Circuit Judge.
Paul Chaplin, Paul Howley, and Christine Meisinger-
Henschel appeal a Patent Trial and Appeal Board
(“Board”) decision affirming the patent examiner’s final
rejection of claims 26–41 of Application No. 13/588,217,
claiming priority from November 22, 2001, as unpatenta-
ble under the doctrine of obviousness-type double patent-
ing over various claims of U.S. Patent Nos. 6,924,137,
7,056,723, 7,300,658, 7,338,662, 7,445,924, 7,628,980,
7,759,116, 7,964,395, 7,964,396, 7,964,398, 7,695,939,
7,807,146, 7,892,533, 7,897,156, 8,268,327, 8,268,328, and
8,372,622. The issued patents contain claims directed to
methods of amplifying and using a particular modified
vaccinia Ankara virus (“MVA-BN”). Both parties treat as
representative of rejected claims 26–41 the claim to the
virus itself, MVA-BN.
Under the doctrine of obviousness-type double patent-
ing, an applied-for patent claim will not be allowed when
it claims subject matter that is not patentably distinct
from the subject matter claimed in a patent with the same
owner. In re Berg, 140 F.3d 1428, 1431 (Fed. Cir. 1998).
It is undisputed that the “one-way” test for obviousness-
type double patenting applies in this case. Under the
“one-way” test, an applied-for patent claim will not be
allowed if the applied-for claim is obvious over the issued
patent claims, absent a terminal disclaimer. Id. at 1432.
Appellants sought and received patents with claims
directed to various uses of MVA-BN and methods of
generating MVA-BN. The first patent issued in 2005; on
their face, all patents claim priority from November 22,
2001, or later. Over ten years after the initial filings,
Appellants, through continuation and divisional applica-
tions, sought coverage for the virus itself. There are no
terminal disclaimers as to the patents now cited by the
Board.

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IN RE: CHAPLIN 3
Some of the claims were rejected for double patenting
with patents that have a later priority date. On the facts
of this case, there is no allegation or evidence in the
record to distinguish the claimed virus from that disclosed
in the earlier filings, and no restriction requirement or
other formal distinction. Limited to these facts, we affirm
the Board’s decision.
AFFIRMED
COSTS
No costs.

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