Chandrashekar Giliyar et al.

Patent Trials and Appeals Board

Jan 14, 2020

14659318 - (D) (P.T.A.B. Jan. 14, 2020)

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.
14/659,318 03/16/2015 Chandrashekar Giliyar 01235-36041.CON3 5857
123671 7590 01/14/2020
TNW-Lipocine
P.O. Box 1219
Sandy, UT 84091-1219
EXAMINER
SZNAIDMAN, MARCOS L
ART UNIT PAPER NUMBER
1628
NOTIFICATION DATE DELIVERY MODE
01/14/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
kg@lipocine.com
patentdocket@tnw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHANDRASHEKAR GILIYAR,
NACHIAPPAN CHIDAMBARAM, MAHESH V. PATEL, and
SRINIVASAN VENKATESHWARAN
____________

Appeal 2018-002918
Application 14/659,318
Technology Center 1600
____________

Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
MICHAEL A. VALEK, Administrative Patent Judges.

VALEK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving
claims to a pharmaceutical composition for oral treatment of testosterone
deficiency. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Lipocine, Inc. as the real party in
interest. Appeal Br. 3. Herein, we refer to the Final Action mailed February
2, 2017 (“Final Act.”); Appellant’s Appeal Brief filed September 11, 2017
(“Appeal Br.”); and Examiner’s Answer mailed November 27, 2017
(“Ans.”).
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STATEMENT OF THE CASE
Claims 45–49 and 51–63 are on appeal and can be found in the
Claims Appendix of the Appeal Brief. Claim 45 is representative of the
claims on appeal. It reads as follows:
45. A pharmaceutical composition for oral treatment
of testosterone deficiency comprising: from about 20 mg to
about 250 mg testosterone undecanoate; a lipophilic carrier
having oleic acid and a triglyceride of one or more fatty acids
chosen from oleic acid, linoleic acid, palmitic acid, stearic acid,
or a combination thereof; and a hydrophilic additive which is
Cremophor RH 40.
Appeal Br. 25.
Appellant seeks review of the following rejections:2
I. Claims 45–49, 51, and 54–63 under 35 U.S.C. § 103 as unpatentable
over Dudley3 as evidenced by Rombi4; and
II. Claims 52 and 53 under 35 U.S.C. § 103 as unpatentable over Dudley
as evidenced by Rombi in view of Patel.5
Appeal Br. 13–22. The issue for both rejections is whether the
preponderance of the evidence supports Examiner’s finding that Appellant’s
claims are obvious over the cited prior art. Appellant does not present any
argument for rejection II beyond those arguments presented for rejection I.
See Appeal Br. 22 (arguing that the rejection of claims 52 and 53 should be

2 Appellant also sought review of Examiner’s rejection of claims 56 and 57
under 35 U.S.C. § 112 for failure to comply with the written description
requirement. Appeal Br. 9–12. Examiner subsequently withdrew that
rejection and it is not before us now. Ans. 3.
3 US 2008/0317844 A1; published Dec. 25, 2008 (“Dudley”).
4 US 6,348,609 B1; issued Feb. 19, 2002 (“Rombi”).
5 US 2006/0034937 A1; published Feb. 16, 2006 (“Patel”).
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overturned “for the same reasons” as the rejection of claims 45–49, 51, and
54–63). Accordingly, we focus our analysis on rejection I.
Findings of Fact
FF1. Dudley teaches a drug delivery system for oral administration
of testosterone esters. Dudley, Abstr. Dudley teaches this system comprises
a testosterone ester, two or more lipid components and a hydrophilic
surfactant. Id. ¶ 7. According to Dudley, the lipid components include fatty
acids such as oleic acid (id. ¶¶ 72–73) and may also include a digestible oil
such as borage oil (id. ¶¶ 95–96). Dudley teaches that “Cremophor RH40
can generally suffice” as the hydrophilic surfactant component in such
systems. Id. ¶ 69.
FF2. Dudley specifically identifies testosterone undecanoate, i.e., “T-
undecanoate” or “TU,” as a testosterone ester for use in its delivery systems.
Dudley ¶ 110; see also Id. claim 50 (reciting a pharmaceutical composition
comprising TU, Cremophor RH40, borage acid, oleic acid and peppermint
oil).
FF3. Dudley teaches that the concentration of drug in such systems
“generally will lie in the range 0.1% to 50% by weight, preferably between
about 10% to 30% by weight, and most preferably about 10% and 20% by
weight.” Dudley ¶ 101. In addition, Dudley discloses a number of specific
embodiments comprising testosterone or testosterone ester in amounts
ranging from 20 to 400 mg with weight percentages based on an 800 mg fill
weight capsule. Id. ¶¶ 110–111 (Table 1).
FF4. Dudley teaches that the “lipophilic surfactant component, in
some embodiments, may further comprise a ‘controlled-release’ surfactant.”
Dudley ¶ 70. According to Dudley, “the formulations can be tailored to
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deliver medicament in a relatively early peak serum concentration (Tmax) or
one that appears later.” Id. ¶ 131. For example, Dudley teaches that “a
relatively early Tmax, or fast release of the medicament from the delivery
system” can be obtained by reducing “the concentration of the ‘controlled-
release’ lipophilic surfactant (e.g., Precirol) . . . relative to the concentration
of the other lipophilic solvents.” Id. ¶ 132.
FF5. In other embodiments, Dudley teaches “extended release
formulations” that “deliver testosterone into the serum over several hours”
and can be taken once every twelve or twenty four hours “to maintain
desirable levels of serum testosterone.” Dudley ¶ 133.
FF6. Rombi teaches that borage oil contains “more than 40% linoleic
acid in the form of triglycerides.” Rombi 3:1–2.
Analysis
Examiner finds “Dudley teaches a pharmaceutical composition
comprising Testosterone Undecanoate (TU) (claims 1–4) further comprising:
oleic acid, Cremophor RH40, and borage oil (see claim 50)” and that
“Rombi teaches that borage oil comprises a mixture of triglycerides of
linoleic (C-18) and/or linolenic (C-18) acids,” as recited in claim 45. Final
Act. 11. With respect to the amount of testosterone recited in Appellant’s
claims, Examiner determines Dudley teaches “that the amounts of
testosterone ester can vary from 20 mg per capsule up to 400 mg per capsule
(see table 1) which clearly overlap[s] with the instantly claimed ranges.” Id.
Regarding the “release 90% or more” limitation recited in claims 56 and 57,
Examiner finds the “structural limitations and amounts recited in the instant
claims (pharmaceutical composition comprising TU, oleic acid, Cremophor
RH40, etc.) are disclosed by the prior art (Dudley),” therefore there is a
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presumption that Dudley’s compositions exhibit the same properties. Id. at
12 (citing In re Best, 562 F.2d 1252 (CCPA 1977)).
Appellant argues Dudley does not teach the TU concentrations recited
in the rejected claims. Appeal Br. 13–14. Appellant disputes Examiner’s
reliance on the amounts of testosterone ester specified in Table 1 of Dudley
because “[n]one of the formulations in Table 1 of Dudley et al. appear
similar to Appellant’s claims nor claims 1–4 of Dudley et al.” Id. at 14. In
particular, Appellant points to the fact that the embodiments in Table 1 all
contain “Precirol ATO 5,” which Dudley describes as a “controlled release
surfactant.” Id. Appellant contends that claims 56 and 57 “specify an
immediate release property” and therefore Dudley’s disclosure of controlled
release formulations, such as those containing Precirol ATO 5, “teaches
away from Appellant’s claimed fast or immediate release compositions.” Id.
at 14–15, 18–19. Appellant additionally contends Dudley “teaches away
from using testosterone undecanoate . . . and teaches a clear superiority of
testosterone palmitate over testosterone undecanoate.” Id. at 20–21. Thus,
according to Appellant, “one of skill in the art, in view of the teachings of
Dudley et al., would not select testosterone undecanoate as a starting point,
but rather would choose testosterone palmitate since it is disclosed to have
superior properties to other T-esters.” Id. at 21.
We are not persuaded by Appellant’s arguments. We adopt
Examiner’s findings of fact and reasoning regarding the scope and content of
the prior art (Final Act. 10–18; FF1–FF6) and agree that the claims are
obvious over the cited prior art. We address Appellant’s arguments in turn
below.
We agree with Examiner that Dudley teaches the TU concentrations
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recited in Appellant’s claims. Appellant’s claims recite TU concentrations
ranging from “about 20 mg to about 250 mg” in claim 45, and “about 150
mg” and “about 240 mg” in claims 60 and 61 respectively. Appeal Br. 25,
27. Dudley discloses the claimed concentrations in two respects. First,
Dudley teaches that the amount of drug in its formulations ranges from
“0.1% to 50% by weight, preferably between about 10% to 30% by weight,
and most preferably about 10% and 20% by weight.” FF3. The weight
percentage ranges6 taught in Dudley overlap with both the broad (i.e., about
20–250 mg) and narrower (i.e., about 150 mg and 240 mg) concentrations
recited Appellant’s claims. Second, Dudley discloses embodiments in Table
1 with testosterone ester amounts ranging from 20–400 mg, which again
overlaps with the concentration range of “from about 20 mg to about 250
mg” recited in claim 45, and encompasses the values of “about 150 mg” and
“about 240 mg” recited in claims 60 and 61 respectively. Appellant’s
claims. FF3; see also Dudley ¶ 111 (Table 1 describing multiple
embodiments with “240,” “160,” and “120” mg of “T-ester”). Because
Dudley discloses values that closely overlap with, or encompass, the claimed
concentrations, we agree that Examiner established a prima facie case of
obviousness. See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)
(“[W]e and our predecessor court have consistently held that even a slight
overlap in range establishes a prima facie case of obviousness.”).
Appellant has not identified sufficient evidence to rebut the prima

6 Assuming an 800 mg fill weight capsule as taught in Dudley, Dudley’s
weight percentages equate to an amount of drug in in the range of 0.8 to 400
mg, “preferably between” about 80 to 240 mg, and “most preferably” about
80 to 160 mg. See Dudley ¶ 101. These ranges overlap with those recited in
Appellant’s claims.
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facie case resulting from Dudley’s overlapping ranges. There is no
argument that the claimed concentrations yield unexpected results or
otherwise demonstrate the criticality of the claimed concentrations relative
to the overlapping ranges taught in Dudley.7 Instead, Appellant argues that
the formulations in Table 1 of Dudley are not “similar” to those recited in
Appellant’s claims because, e.g., they contain additional components such as
Precirol ATO 5. This argument is unpersuasive. As an initial matter,
Appellant’s claims are open-ended and do not preclude other elements,
including Precirol ATO 5. Moreover, Examiner’s rejections are not
premised on any of the specific formulations in Table 1 being exactly the
same as the compositions in Appellant’s claims. Rather, Examiner finds that
one of ordinary skill in the art would understand the range of testosterone
ester concentrations specified in those formulations to reasonably suggest
the TU concentrations recited in Appellant’s claims such that those
concentrations would have been obvious. See Final Act. 11. We agree that
such a finding is supported by the record before us. FF3.
We are likewise unpersuaded by Appellant’s argument that Dudley
teaches away from TU. Dudley specifically identifies TU as one of a
handful of testosterone esters for use in its delivery systems. FF2. Thus, it
would have been an obvious choice for its known properties. As Examiner
points out, Dudley’s composition claims are specifically directed to

7 “The law is replete with cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims .
. . in such a situation, the applicant must show that the particular range is
critical, generally by showing that the claimed range achieves unexpected
results relative to the prior art range.” In re Woodruff, 919 F.2d 1575, 1578
(Fed. Cir. 1990).
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compositions comprising either TU or testosterone enanthate (TE) along
with the other components recited in claim 45. FF2, Final Act. 11; see also
Ans. 24–25 (“claim 36 (of Dudley) explicitly recites a pharmaceutical
composition comprising testosterone undecanoate”). The teachings
Appellant relies upon, e.g., Dudley’s teaching that testosterone palmitate
(TP) “can yield superior bioavailability to that found with other equivalent
esters (e.g., testosterone undecanoate (TU)),” (see Appeal Br. 21 (quoting
Dudley ¶¶ 107, 109)) do not “criticize, discredit, or otherwise discourage”
the use of TU and therefore do not teach away from it. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). Even if Dudley could be read to favor the
use over TP over TU, “in a section 103 inquiry, ‘the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.” Merck, 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)). Here, Dudley specifically
discloses, even claims, the use of TU in its delivery systems. FF2. Thus, the
record supports Examiner’s determination that the use of TU would be
obvious over the cited prior art.
Finally, we are unpersuaded by Appellant’s arguments that Dudley
teaches only “controlled/extended release formulations,” whereas
“Appellant’s claimed formulations are immediate release formulations.” See
Appeal Br. 14–15, 19. Claims 45–49, 51–55, and 58–65 are not limited to
immediate release formulations. Thus, Appellant’s arguments concerning
Dudley’s teaching of controlled release components and formulations do not
distinguish claims 45–49, 51–55, and 58–65.
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It is only dependent claims 56 and 57 that recite what appellant
characterizes as “an immediate release property.” See Appeal Br. 14. But
even with respect to those claims, the record supports Examiner’s finding
that Dudley’s teachings are not limited to controlled release formulations.
Dudley describes controlled release surfactants, such as Precirol ATO 5, as
optional components that “may further” be included in “some
embodiments.” FF4. Thus, one of ordinary skill in the art would understand
that Dudley also teaches embodiments that lack such controlled release
components. See Upsher-Smith Labs., Inc. v. Pamlab, LLC, 412 F.3d 1319,
1322 (Fed. Cir. 2005) (explaining that a reference disclosing the optional
inclusion of a particular component teaches compositions that both do and
do not contain that component). Moreover, Dudley teaches that the Tmax of
its compositions can be tailored to achieve an early peak release based on the
choice and amount of the disclosed components. FF4. And Dudley teaches
compositions comprising the same ingredients as claims 56 and 57 at a TU
concentration that overlaps with the claimed range. FF1–FF3, FF6. As
Examiner found, this structural similarity gives rise to a presumption that the
prior art compositions in Dudley will exhibit the release properties recited in
claims 56 and 57. Final Act. 12; see also In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990) (“Products of identical chemical composition can not have
mutually exclusive properties.”). Appellant has not identified sufficient
evidence to overcome Examiner’s prima facie showing.
For these reasons, we determine that the preponderance of the
evidence supports Examiner’s rejection of claims 45–49, 51, and 54–63 as
obvious over Dudley and Rombi as well as Examiner’s rejection of claims
52 and 53 as obvious over Dudley, Rombi, and Patel. Therefore, we affirm.
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DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
45–49, 51,
54–63
103 Dudley, Rombi 45–49, 51,
54–63

52, 53 103 Dudley, Rombi,
Patel
52, 53
Overall
Outcome
45–49,
51–63

AFFIRMED