11079089 (B.P.A.I. Feb. 15, 2012)

Ex Parte Bakker et al

Board of Patent Appeals and InterferencesFeb 15, 2012

11079089 (B.P.A.I. Feb. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/079,089 03/15/2005 Cornelis Bakker 01975.0069-00000 2201 22852 7590 02/15/2012 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER MCMILLIAN, KARA RENITA ART UNIT PAPER NUMBER 1627 MAIL DATE DELIVERY MODE 02/15/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte CORNELIS BAKKER, JEFFREY C. GLENNON, MAYKE B. HESSELINK, CLAUDIA THAETE, ANDREW McCREARY, and GUSTAAF J.M. VAN SCHARRENBURG __________ Appeal 2010-011813 Application 11/079,089 Technology Center 1600 __________ Before ERIC GRIMES, LORA M. GREEN, and ERICA A. FRANKLIN, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 18 and 20. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2010-011813 Application 11/079,089 2 STATEMENT OF THE CASE AND DISCUSSION Claim 18 1 is representative of the claims on appeal, and reads as follows: 18. A method for treating or ameliorating Parkinson’s disease, symptomatic and non-symptomatic epilepsies, and seizures comprising administering a 3-amino-8-(1-piperazinyl)-2H-1-benzopyran-2-one compound of formula (2): or a pharmacologically acceptable salt or a stereoisomer thereof. The Examiner has rejected claims 18 and 20 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of van Steen 2 and Nicholson. 3 We agree with the Examiner’s findings, conclusions, and response to arguments. We also make the following observations. Appellants invoke “obvious to try,” asserting that there was not a finite number of solutions as Nicholson teaches that many of the 5-HT receptors might be able to modulate the symptoms of Parkinson’s disease, and that “[t]here are numerous, potentially hundreds, of compounds, which 1 The claims have only been examined to the extent they read on the elected species of Parkinson’s disease (Ans. 12). 2 van Steen et al., EP 0 650 964 A1, published May 3, 1995. 3 S. L. Nicholson and J. M. Brotchie, 5-hydroxytryptamine (5-HT, serotonin) and Parkinson’s disease – opportunities for novel therapeutics to reduce the problems of levodopa therapy, 9 (Suppl. 3) EUR. J. NEUROLOGY 1-6 (2002). Appeal 2010-011813 Application 11/079,089 3 act on 5-HT1A, 5-HT1B, and 5-HT2C receptors, individually or in various combinations” (Reply Br. 3). The Examiner’s combination, however, is not based on an obvious to try rationale. That is, the Examiner’s combination is based on van Steen’s teaching that the compound of formula 2 of claim 18 acts as a strong 5-HT1A agonists, and specifically Nicholson teaches 5-HT1A as a therapeutic target for Parkinson’s disease (see Ans. 4-6). Thus, we agree with the Examiner that it would be obvious to use a compound of formula 2 as set forth in claim 18 as taught by van Steen to treat or ameliorate Parkinson’s disease because Nicholson teaches 5-HT1A as a therapeutic target for Parkinson’s disease. Appellants argue that there is no reasonable expectation that compound 2 in claim 18, which is one of the compounds taught by van Steen, “would be useful in treating Parkinson’s disease” (Reply Br. 4). First, we note that claim 18 is drawn to a “method for treating or ameliorating Parkinson’s disease,” and thus any reduction in symptoms would meet the requirement of ameliorating the disease. Moreover, all that is required is a reasonable expectation of success, not absolute predictability of success. See In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988). In this case, as found by the Examiner (Ans. 9-10), van Steen teaches that the compounds, such as the compound of Formula 2 required by claim 18, are strong 5-HT1A agonists, but also act as 5-HT1D antagonists (van Steen, p. 3). As taught by van Steen, the 5-HT1D antagonism enhances release of 5-HT, therefore strengthening activity, such as, for example, antidepressant activity (id.). As also found by the Examiner (Ans. 9), Nicholson teaches that 5-HT1A receptor stimulation has effects in rats that Appeal 2010-011813 Application 11/079,089 4 could represent an antiparkinsonian action, and others that are consistent with a reduction in dyskinesia (Nicholson, p. 4). Thus, the combination provides a reasonable expectation that the 5-HT1A agonist of formula 2 as required by claim 18 as taught by van Steen could be successfully used to ameliorate or treat Parkinson’s disease. SUMMARY We affirm the rejection of claims 18 and 20 under 35 U.S.C. § 103(a) as being rendered obvious by the combination of Van Steen and Nicholson. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cdc