Ex Parte Carpino et al

Board of Patent Appeals and Interferences

Apr 19, 2010

10823152 (B.P.A.I. Apr. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PHILIP A. CARPINO and ROBERT L. DOW
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Appeal 2009-010577
Application 10/823,152
Technology Center 1600
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Decided: April 19, 2010
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Before ERIC GRIMES, LORA M. GREEN, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
bicyclic pyrazolyl imidazolyl compounds. The Patent Examiner rejected the
claims on the ground of nonstatutory obviousness-type double patenting.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
The invention relates to compounds of Formula (I) or (II), said to act
as cannabinoid receptor ligands, particularly as CB1 receptor antagonists:

(Spec. 3:16 – 4:20.)
Claims 1, 4, 8-11, 31, 35, 36, 42, 43, 49, 55, 59 and 64, which are all
the pending claims, are on appeal. (App. Br. 5.) Appellants provided a copy
of the claims in the Claims Appendix of the Appeal Brief dated Sept. 15,
2008. (App. Br. 19-23.)
The Examiner rejected the claims on the ground of nonstatutory
obviousness-type double patenting over claims 1-23 of U.S. Patent No.
7,230,0241 (“the ‘024 patent”). (Ans. 5-14.)2 Claims 4, 8-11, 31, 35, 36, 42,
43, 49, 55, 59 and 64 have not been argued separately and therefore stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

NONSTATUTORY OBVIOUSNESS-TYPE DOUBLE PATENTING
The Issue
The Examiner’s position is: “[a]lthough the conflicting claims are not
identical, they are not patentably distinct from each other because the

1 US 7,230,024 B2, issued to Philip A. Carpino and Robert L. Dow, Jun. 12,
2007.
2 The Answer omitted claim 11 from the rejection. The omission was
corrected in an Office communication mailed Dec. 16, 2008.
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structures are very similar and the compounds are isomers and hence prima
facie obvious.” (Ans. 6.) The Examiner reasons that “[b]oth [Appellants’]
compounds and those of the patent have the same pyrazole with the 2 phenyl
rings. Thus one of skill in the art would consider that the isomers with the
different position of the =O . . . also have the same activity, thus motivating
a person skilled in the art to try, with a definite amount of predictability of
being successful.” (Id. at 13.)
Appellants contend that although the compounds now claimed and
the compounds claimed in the ‘024 patent are structural isomers, (1) “one
can easily see that access to the carbonyl is hindered in one of the structures
but not in the other one,” and (2) “the closeness of the R3a and R3b
substituents on one orientation would have more influence on the phenyl
group than the other orientation.” (App. Br. 16.) According to Appellants,
[i]t is well known that binding to a receptor can be influenced
by the orientation of the groups on the compound;
consequently, one would not be able to predict with any
certainty that such a compound would work until it was made
and tested. Therefore, it would not be obvious that the
compounds of the present invention would even bind to the CB-
1 receptor let alone act as a CB-1 antagonist/inverse agonist
based on the compounds disclosed and claimed in US
7,230,024. (Id.)

The Examiner found Appellants’ arguments unpersuasive in view of
prior art3 that described the compound SR 141716, which had a 2-phenyl
pyrazole structure and cannabinoid receptor binding activity. (Ans. 17-18.)
In the Examiner’s evaluation, the SR 141716 evidence suggested that

3 Giancarlo Colombo et al., Appetite Suppression And Weight Loss After
The Cannabinoid Antagonist SR 141716, 63 LIFE SCIENCES 113-117 (1998).
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“making changes on the other end of the pyrazole would not affect the
activity.” (Id. at 17.)
The issues relevant to this appeal are:
was the Examiner’s evidence sufficient to make a prima facie case of
obviousness; and
if the Examiner’s evidence established a prima facie case of
obviousness, did Appellants produce persuasive rebuttal evidence of
unobviousness?

Findings of Fact
We adopt the facts found in the Examiner’s Answer.

Principles of Law
When chemical compounds have “very close” structural
similarities and similar utilities, without more a prima facie
case [of obviousness] may be made. See for example In re
Wilder, 563 F.2d 457 . . . (CCPA 1977) (adjacent homologues
and structural isomers); In re May, 574 F.2d 1082 . . . (CCPA
1978) (stereoisomers); In re Hoch, 428 F.2d 1341 . . . (CCPA
1970) (acid and ethyl ester). When such “close” structural
similarity to prior art compounds is shown, in accordance with
these precedents the burden of coming forward shifts to the
applicant, and evidence affirmatively supporting unobviousness
is required.

In re Grabiak, 769 F.2d 729, 731 (Fed. Cir. 1985). “The evidence
[affirmatively supporting unobviousness] may take various forms, as
relevant in the particular case.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d
1075, 1086 (Fed. Cir. 2008). However, “obviousness cannot be avoided
simply by a showing of some degree of unpredictability in the art so long as
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there was a reasonable probability of success.” Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1364 (Fed. Cir. 2007). “Obviousness does not require
absolute predictability of success. . . . [A]ll that is required is a reasonable
expectation of success.” In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988).

Analysis
We agree with the Examiner that the close structural similarity of the
compounds now claimed to the cannabinoid receptor binding compounds
claimed in the ‘024 patent was sufficient for a prima facie case of
obviousness. Appellants argue that “[I]n cases involving new chemical
compounds, it remains necessary to identify some reason that would have
led a chemist to modify a known compound in a particular manner to
establish prima facie obviousness of a new claimed compound.” Takeda
Chem. Industries, Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1357 (Fed.
Cir. 2007). The facts in Takeda are distinguishable. The issue in Takeda
concerned the obviousness of the choice of lead compound for further
modification, not the obviousness of one isomer over another. We are
guided by the Grabiak analysis, which our reviewing court restated after
deciding Takeda. See Sanofi-Synthelabo, 550 F.3d at 1086 (“Precedent
establishes the analytical procedure whereby a close structural similarity
between a new chemical compound and prior art compounds is generally
deemed to create a prima facie case of obviousness, shifting to the patentee
the burden of coming forward with evidence of nonobviousness.”).
We also agree with the Examiner that Appellants’ arguments are not
the kind of evidence needed to support a conclusion of nonobviousness.
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Evidence, not attorney argument, is needed here. Appellants argue that
receptor binding “can be influenced” by substituent orientation, and one
could not predict “with any certainty” that an isomer would work until it was
made and tested. Assuming there is some possibility of uncertainty about
how well an isomer would bind the receptor, “certainty” is not the standard.
See O’Farrell, 853 F.2d at 903-04. Further, the Examiner produced
evidence indicating that the claimed isomers would have been expected to
bind the receptor, notwithstanding the change in substituent orientation.
(Ans. 18, discussing Colombo’s SR 141716.) That evidence also supports
the Examiner’s finding that there would have been a reasonable expectation
of success. See Pfizer, 480 F.3d at 1364.

CONCLUSIONS
The Examiner’s evidence was sufficient to make a prima facie case of
obviousness.
Appellants did not produce persuasive evidence of nonobviousness.

SUMMARY
We affirm the rejection of claims 1, 4, 8-11, 31, 35, 36, 42, 43, 49, 55,
59 and 64 on the ground of nonstatutory obviousness-type double patenting
over claims 1-23 of US 7,230,024.
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

Appeal 2009-010577
Application 10/823,152

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