Ex Parte Ding et al

Patent Trials and Appeals Board

Mar 27, 2014

11966894 - (D) (P.T.A.B. Mar. 27, 2014)

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.
11/966,894 12/28/2007 Pingyu Ding 800050.414 5944
56179 7590 03/28/2014
SEED INTELLECTUAL PROPERTY LAW GROUP PLLC
701 FIFTH AVENUE
SUITE 5400
SEATTLE, WA 98104-7092
EXAMINER
YOO, SUN JAE
ART UNIT PAPER NUMBER
1622
MAIL DATE DELIVERY MODE
03/28/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PINGYU DING, DANE GOFF, JING ZHANG, RAJINDER
SINGH, SACHA HOLLAND, JIAXIN YU, THILO J. HECKRODT, and
JOANE LITVAK
____________

Appeal 2012-002228
Application1 11/966,894
Technology Center 1600
____________

Before DEMETRA J. MILLS, ERIC GRIMES, and ULRIKE W. JENKS,
Administrative Patent Judges.

JENKS, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to
heteroaryl substituted triazoles that can function as inhibitors of tyrosine
kinase. The Examiner has rejected the claims as anticipated. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify Rigel Pharmaceuticals, Inc. as the Real Party in Interest
(App. Br. 2).
App
App

N5-h
whic
as A

Claim
claim
adde
eal 2012-0
lication 11
The Spe
eteroaryl s
h are usef
xl.” (Spec
Claims 1
s Append
s on appe
d):
1. A
wherein
R
group c
C(O)N(R

2. Th
formula
wherein
R
group c
C(O)N(R
02228
/966,894
ST
cification
ubstituted
ul as inhib
. 1, ll. 9-1
-3, 7, 8, 1
ix of the A
al and are
compound
:
l, R4 and R
onsisting
6)R7, -C(=
e compo
(Ia):
:
l, R4 and R
onsisting
6)R7, -C(=
ATEMEN
disclosed “
triazoles a
itors of the
1.)
7, and 34 a
ppeal Bri
reproduce
of formu
5 are eac
of hydrog
NR6)N(R
und of cl
5 are eac
of hydrog
NR6)N(R
2
T OF TH
N3-hetero
nd pharm
receptor
re on app
ef. Claim
d, in relev
la (I):
h indepen
en, alkyl,
6)R7; . . . .
aim 1, w
h indepen
en, alkyl,
6)R7; . . . .
E CASE
aryl substi
aceutical c
protein tyr
eal, and ca
s 1 and 2 a
ant part, b
dently sel
aryl, ara
hich is a

dently sel
aryl, ara
tuted triaz
ompositio
osine kina
n be found
re illustra
elow (emp

ected from
lkyl, -C(O
compoun
ected from
lkyl, -C(O
oles and
ns thereof
se known
in the
tive of the
hasis
the
)R8,
d of
the
)R8,

App
App

unde
60/8
insta
insta
comp
R1, R
appl
The
(Mar
at 5.

date

Find

struc

2 Ma
2008
eal 2012-0
lication 11
The Exa
r 35 U.S.C
The Exa
82,875, fil
nt applicat
nt generic
ounds can
4 and R5
ication) is
Examiner
ch 22, 200
)
The issu
of Dec. 29
ings of Fa
FF 1. W
ture:

rrion Wan
, having a
02228
/966,894
miner has
. § 102(e)
miner take
ed Dec. 29
ion claims
claims (A
not be use
are -C(=N
not suffici
concludes
7) antedat
e is: Are th
, 2006 bas
ct
anamaker

namaker e
priority d
rejected cl
by Wanna
s the posit
, 2006 (ʼ8
benefit o
ns. 4-5). S
d to form
R6)N(R6
ent descrip
that “the p
es the inst
e claims o
ed on the
disclosed

t al., WO
ate of Mar
3
aims 1-3,
maker.2
ion that th
75 provisi
f, does not
pecificall
ulate comp
)R7. . . . (i
tion for a
rior art co
ant claims
n appeal e
ʼ875 provi
compoun
2008/1161
. 22, 2007
7, 8, 17, an
e U.S. pro
onal appli
have suff
y, the Exam
ounds of
e. disclosu
genus of f
mpound o
(Septemb
ntitled to
sional app
d #46 havi
39 A2, pu
.
d 34 as an
visional ap
cation), wh
icient supp
iner find
formula I w
re of ʼ875
ormula I”
f Wannam
er 26, 200
an effectiv
lication?
ng the fol
blished Se
ticipated
plication
ich the
ort for the
s “[t]hese
herein

(id. at 6).
aker et al.
7).” (Id.
e filing
lowing
pt. 25,

Appeal 2012-002228
Application 11/966,894

4
(Wannamaker 28; Ans. 4)
FF 2. Appellants acknowledge that “Wannamaker #46 is a compound
of formula (Ia) (see Claim 2) wherein R1, R4 and R5 are each hydrogen and
R2 and R3 are each heteroaryl (pyridinyl and pyrimidinyl substituted
with a heterocyclyl group, respectively).” (App. Br. 6.)

Analysis
The Examiner takes the position that claim 1 is not entitled to an
effective filing date based on the U.S. provisional application 60/882,875,
filed Dec. 29, 2006 (ʼ875 provisional application) (Ans. 4-5). Specifically,
the Examiner finds that the ʼ875 provisional application does not recite
compounds of generic claim 1, represented by formula (I) wherein R1, R4
and R5 are -C(=NR6)N(R6)R7 (id. at 6). The Examiner concludes that “[t]he
ʼ875 application does not provide sufficient support for the genus now
claimed. The priority date of the ‘875 application cannot be granted. The
instant generic claims have a later date which is September 26, 2007.” (Id.
at 7.)
For claims in a non-provisional application to obtain the benefit of the
filing date of a provisional parent application, “the specification of the
provisional must ‘contain a written description of the invention and the
manner and process of making and using it, in such full, clear, concise, and
exact terms,’ 35 U.S.C. § 112 ¶ 1, to enable an ordinarily skilled artisan to
practice the invention claimed in the non-provisional application.” New
Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir.
2002).
Appeal 2012-002228
Application 11/966,894

5
We agree with the Examiner’s conclusion that the subject matter now
claimed, specifically reciting the substituent -C(=NR6)N(R6)R7 was
disclosed in the provisional application US 60/975,443, filed Sept. 26, 2007
(ʼ443 provisional application) but not in the provisional application US
60/882,875, filed Dec. 29, 2006 (ʼ875 provisional application). Thus, the
effective filing date of the present claims is Sept. 26, 2007.
By contrast, Wannamaker is entitled to an effective filing date of Mar.
22, 2007. For international applications filed after November 29, 2000,
which designate the United States, and which were published in English,
“[i]f such an international application properly claims . . . priority to an
earlier-filed U.S. provisional application, . . . the reference [is applied] under
35 U.S.C. 102(e) as of the earlier filing date, assuming all the conditions of
35 U.S.C. 102(e) and 35 U.S.C. 119(e), 120, or 365(c) are met.” MPEP §
2136.03 II.
Wannamaker’s application was filed after November 29, 2000,
designated the United States, was published in English, and claims priority
to U.S. provisional application 60/919,469, filed Mar. 22, 2007. Thus, the
Examiner may properly rely upon Wannamaker’s priority date of Mar. 22,
2007 in making the rejection under 35 U.S.C. 102(e).
The Examiner finds, and Appellants do not dispute (FF 2), that
compound #46 of Wannamaker is a species that falls with the scope of the
genus of claim 1 (Ans. 4; FF 1). Appellants contend that they “need only
show earlier ‘priority with respect to so much of the claimed invention as the
reference happens to show’” relying on In re Stempel and MPEP
715.03(I)(B) in support (App. Br. 5-6; see also Reply Br. 2). Appellants
contend
Appeal 2012-002228
Application 11/966,894

6
the genus disclosed on page 3 of the '875 application describes
compounds of formula (Ia) wherein R1, R4 and R5 are each
hydrogen and R2 and R3 are each heteroaryl. . . . This priority
document further describes the specific heteroaryl groups (i. e.,
pyridinyl and pyrimidinyl substituted with a heterocyclyl
group) present at the corresponding R2 and R3 positions of
Wannamaker #46 as choices for heteroaryl groups at the R2 and
R3 positions of formula (I).
(App. Br. 6.)
We are not persuaded by Appellants’ contentions. Rule 131 (37
C.F.R. § 1.131) provides an ex parte mechanism by which to antedate
subject matter in a reference. See In re Zletz, 893 F.2d 319, 322 (CAFC
1990). Here, Appellants do not provide additional evidence in the form of
an affidavit or declaration to antedate the Wannamaker reference. Instead,
Appellants rely solely on the disclosure the ʼ875 provisional application in
an effort to antedate the reference. To establish invention of the subject
matter of a rejected claim prior to the effective date of the reference on
which the rejection is based requires:
[t]he showing of facts shall be such, in character and weight, as
to establish reduction to practice prior to the effective date of
the reference, or conception of the invention prior to the
effective date of the reference coupled with due diligence from
prior to said date to a subsequent reduction to practice or to the
filing of the application. Original exhibits of drawings or
records, or photocopies thereof, must accompany and form part
of the affidavit or declaration or their absence must be
satisfactorily explained.
(37 U.S.C. § 1.131(b) (2004).)
We agree with the Examiner that “the prior art compound of
Wannamaker et al. (March 22, 2007) antedates the instant claims” (Ans. 5).
We are not persuaded by Appellants’ position that the ʼ875 provisional
Appeal 2012-002228
Application 11/966,894

7
application provides the evidence required by Rule 131. Appellants have
not provided “exhibits of drawings or records” as evidence of conception or
reduction to practice, nor have they explained the absence of such evidence,
as required by Rule 131.
Simply put, the ʼ875 provisional application is not a Rule 131
declaration and thus does not meet the requirements set forth in 37 C.F.R.
§ 1.131. Instead, to state the obvious, the ʼ875 provisional application is a
provisional patent application. Claims in a later-filed nonprovisional patent
application are entitled to the benefit of an earlier-filed provisional patent
application only “for an invention disclosed in the manner provided by
section 112(a) [formerly § 112, ¶ 1] (other than the requirement to disclose
the best mode) in [the] provisional application.” 35 U.S.C. § 119(e)(1).
Claim 1 is directed to a genus of compounds in which the R1, R4, and
R5 substituents can be -C(=NR6)N(R6)R7, while the ʼ875 provisional
application does not describe a genus of compounds in which the R1, R4, and
R5 substituents can be -C(=NR6)N(R6)R7. The ʼ875 provisional application
therefore does not provide the written descriptive support required by 35
U.S.C. § 112, first paragraph for the presently claimed genus. See Regents
of the Univ. of California v. Eli Lilly and Co., 119 F.3d 1559, 1567 (Fed.
Cir. 1997) (“A written description of an invention involving a chemical
genus, like a description of a chemical species, ‘requires a precise definition,
such as by structure, formula, [or] chemical name, ’ of the claimed subject
matter sufficient to distinguish it from other materials.”).
In short, claim 1 is not entitled to the benefit of the ʼ875 provisional
application and Appellants have not provided the showing required by 37
C.F.R. § 1.131 to antedate the Wannamaker reference. Appellants have not
Appeal 2012-002228
Application 11/966,894

8
shown error in the Examiner’s finding that Wannamaker is a prior art
reference within the meaning of 35 U.S.C. §102. We affirm the rejection of
claim 1. As Appellants do not argue the claims separately, claims 2, 3, 7, 8,
17, and 34 fall with claim 1. 37 C.F.R. § 41.37(c)(1).

SUMMARY
We affirm the rejection of claims 1-3, 7, 8, 17 and 34 are anticipated
under 35 U.S.C. § 102(e) by Wannamaker.
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

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