11243645 (B.P.A.I. Sep. 20, 2010)

Ex Parte Askew et al

Board of Patent Appeals and InterferencesSep 20, 2010

11243645 (B.P.A.I. Sep. 20, 2010)

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. 11/243,645 10/05/2005 Benny C. Askew JR. A-964 (US) 9360 30174 7590 09/20/2010 AMGEN INC. 1120 VETERANS BOULEVARD SOUTH SAN FRANCISCO, CA 94080 EXAMINER CHU, YONG LIANG ART UNIT PAPER NUMBER 1626 MAIL DATE DELIVERY MODE 09/20/2010 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 BENNY C. ASKEW JR., TOSHIHIRO AYA, KAUSTAV BISWAS, JIAN J. CHEN, JASON BROOKS HUMAN, and WENYUAN QIAN __________ Appeal 2010-000447 Application 11/243,645 Technology Center 1600 __________ Before ERIC GRIMES, FRANCISCO C. PRATS, and JEFFREY N. FREDMAN, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL1 This is an appeal under 35 U.S.C. § 134 involving claims to a genus of chemical compounds. The Examiner has rejected the claims on the basis 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-000447 Application 11/243,645 2 that the Specification does not provide adequate support for excluding one species from the claimed genus. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Claims 1-15 and 23 are on appeal. Claim 1 is the only independent claim and is directed to a genus of compounds defined by Formula (I): where the various R groups are selected from defined substituents, “provided that the compound of Formula (I) is not 3-chloro-N-phenyl-4- (phenylsulfonyl)butanamide” (claim 1). The Examiner has rejected claims 1-15 and 23 under 35 U.S.C. § 112, first paragraph, on the basis that the Specification does not specifically disclose the compound that is excluded by the proviso of claim 1, nor does it provide sufficient identifying characteristics that would lead a skilled worker to that specific compound (Answer 3-4). 2 The Examiner concludes that “it would not be obvious to one of ordinary skill in the art to remove the specific compound . . . from the generic claim of a compound of formula (I) according to claim 1 without further guidance from the specification” (id. at 4). 2 The Examiner also rejected claims 1, 4, 5, and 23 under 35 U.S.C. § 103(a) (Office Action mailed Aug. 17, 2007, at 3). That rejection is not being appealed (Appeal Br. 2). Appeal 2010-000447 Application 11/243,645 3 Appellants contend that excluding the particular species from the claimed genus is supported by case law, including In re Johnson, 558 F.2d 1008 (CCPA 1977) (Appeal Br. 3-4) and In re Wertheim, 541 F.2d 257 (CCPA 1976) (Reply Br. 2). In our view, Appellants have the better position. The test for adequate written description of a claimed invention is whether the specification as filed demonstrated to those of ordinary skill in the art that the inventor was in possession of what is claimed. Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)(en banc) (“[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”). The Examiner has not persuasively explained why a disclosure showing possession of the genus of compounds defined by Formula (I) would not show possession of the same genus minus one species. Nor has the Examiner cited case law to support the position that excluding a chemical species from a claimed genus requires the specification to describe that species with comparable precision to what is required in order to specifically claim that species. We therefore reverse the rejection of claims 1-15 and 23 under 35 U.S.C. § 112, first paragraph. REVERSED lp Appeal 2010-000447 Application 11/243,645 4 AMGEN INC. 1120 VETERANS BOULEVARD SOUTH SAN FRANCISCO CA 94080