Ex Parte Djuric et al

Patent Trial and Appeal Board

Oct 24, 2016

13221245 (P.T.A.B. Oct. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/221,245 08/30/2011 Dejan Djuric
48394 7590 10/26/2016
SERVILLA WHITNEY LLC
33 WOOD A VE SOUTH
SUITE 830
!SELIN, NJ 08830
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
BSE44US(0000070723US03) 3198
EXAMINER
BUTCHER, ROBERT T
ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
10/26/2016 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):
docket@dsiplaw.com
jescobar@dsiplaw.com
lmurphy@dsiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEJAN DJURIC, MONIKA HABERECHT,
KARL KOLTER, and BERND BRUCHMANN
Appeal2015-005841
Application 13/221,245
Technology Center 1700
Before LINDA M. GAUDETTE, ELIZABETH M. ROESEL, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 17-22 and 24--33. We have jurisdiction under 35
U.S.C. § 6(b ).
We AFFIRM.
1 In our Decision below we refer to the Specification filed August 30, 2011
(Spec.), the Final Office Action mailed May 14, 2014 (Final Act.), the
Appeal Brief filed January 2, 2015 (Appeal Br.), the Examiner's Answer
mailed April 15, 2015 (Ans.), and the Reply Brief filed May 5, 2015 (Reply
Br.).
2 Appellants identify the real party in interest as BASF SE. Appeal Br. 3.
Appeal2015-005841
Application 13/221,245
STATEMENT OF CASE
The claims are directed to methods for improving solubility of low
solubility substances by mixing low solubility substances with branched
polyesters prepared by polycondensation of citric acid and polyalcohol.
Claims Appendix at Appeal Br. 1 7. According to Appellants, "the present
invention produces rapid-release pharmaceutical formulations, which are
highly soluble in the gastrointestinal tract of patients." Appeal Br. 11; Spec.
i-f28. Claim 17, reproduced below, is illustrative of the claimed subject
matter:
17. A method of improving the solubility for substances of
low solubility in water comprising:
mixing a branched noncrosslinked polyester with
substances of low solubility in water, wherein the branched
polyester is obtained by polycondensation of citric acid with at
least one polyalcohol having at least two hydroxyl groups at a
molar ratio of citric acid to polyalcohol of 2.4: 1 to 1 :3, and the
polyester has an acid number in the range from 132 to 400 mg
KOH/g polymer and having a degree of crosslinking of less than
15% by weight.
Claims Appendix at Appeal Br. 1 7.
REJECTIONS
The Examiner maintains the following rejections3:
3 The Examiner also rejects claim 33 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement. Final Act. 3.
The Examiner later withdraws that rejection. Ans. 9.
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Application 13/221,245
A. Claims 17-22, 24--25, and 28 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Pramanick4 as
evidenced by the datasheet for methyl dopa. Final Act. 3.
B. Claims 17-22, 24--26, and 30-33 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Bruggeman5
as evidenced by the datasheet for paclitaxel. Id. at 6.
C. Claim 27-29 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bruggeman as evidenced by the
data sheet for paclitaxel and further in view of Stumbe. 6
Id. at 10.
Appellants appeal the rejections of claims 17-22 and 24--33.
Appellants argue independent claim 17 but do not separately argue claims
18-22 and 24--33. Appeal Br. 3-9. We therefore focus our discussion
below on claim 17 (Rejections A and B) to resolve the issues on appeal.
OPINION
Rejection A - Obviousness
The Examiner rejects claim 17 (among others) as unpatentable over
Pramanick as evidenced the datasheet for methyl dopa. Final Act. 3. The
Examiner finds that Pramanick teaches "a method of controlled drug release
of methyl dopa (equivalent to a method of improving the solubility)." Id.
4 D. Pramanick & T. T. Ray, Synthesis and biodegradation of copolyesters
from citric acid and glycerol, 19 POLYMER BULLETIN 365-370 (Spring
1988) (hereinafter "Pramanick").
5 Bruggeman et al., WO 2008/144514 A2, published November 27, 2008
(hereinafter "Bruggeman").
6 Stumbe et al., US 2009/0099319 A 1, published April 16, 2009 (hereinafter
"Stumbe").
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Application 13/221,245
The Examiner acknowledges that Pramanick "does not elucidate the acid
number of the polyester" and "does not mention the degree of crosslinking."
Id. at 4. But, the Examiner finds that because Pramanick teaches preparing a
polyester that is "substantially identical to the process described in Example
B of the instant invention, there is a sound basis for determining the
polyester of Pramanick has an acid number within the scope of claim 1." Id.
The Examiner also finds that Pramanick "teaches crosslinking sensitivity is
linearly proportional to the Tg, which is ultimately dependent upon the
molar ratio of citric acid to glycerol (see page p. 368 and Table 1 of
Pramanick)." Id. The Examiner explains that because the molar ratios of
Pramanick are the same as recited by claim 1 7, "there is a sound basis for
determining the products of Pramanick have a degree of crosslinking within
the scope of claim 1." Id. at 5.
Appellants urge that the resulting polyester of the instant invention is
not the same as the polymer in Pramanick. Specifically, Appellants contend
that "the polyesters of the instant invention are soluble in water" and "[ t ]he
polymers of Pramanick ... are amorphous solids which are insoluble in
water and other common organic solvents." Appeal Br. 11. In addition,
Appellants argue that the copolyesters of Pramanick, characterized as
cross linked, are useful for preparation of a controlled release formulation of
drugs, in contrast to the non-crosslinked polyesters of the instant invention-
i.e., having a crosslinkage of less than 15% by weight-which result in a
rapid release formulation. Id. at 11-12; Reply Br. 4.
Appellants do not convince us of reversible error. "Where, as here,
the claimed and prior art products ... are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
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Application 13/221,245
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255
(CCPA 1977); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
And, whether the rejection is under 35 U.S.C. § 102 or under 35 U.S.C. §
103, the burden of proof is the same, and its fairness is evidenced by the
PTO's inability to manufacture products or to obtain and compare prior art
products. Id. Here, the Examiner has provided evidence and analysis
sufficient to shift the burden to Appellants to show that polyester of
Pramanick would not necessarily possess the claimed acid number and
degree of crosslinking as claimed. Appellants contend that the polyester of
Pramanick and the instant invention are different because the polymer of the
present invention is soluble where the polymer of Pramanick is insoluble.
Appeal Br. 11. Appellants' contention is not persuasive because solubility is
not recited in the body of claim 17. Appellants do not adequately explain
the relationship, if any, between solubility and the claimed features (acid
number and degree of crosslinking). Appellants do not show sufficiently
that Pramanick's statements regarding insolubility demonstrate that the
recited acid number and degree of cross-linking features are not necessarily
present in the disclosed polyester. The Examiner, on the other hand,
compares Pramanick to Appellants' Specification and finds that both are
directed to polyesters that are insoluble to a degree. More specifically, the
Examiner finds (Ans. 10) that Pramanick teaches that its polymers are
indeed soluble, i.e., within 8 to 10 days. Pramanick at 367. Moreover, the
instant Specification observes that the degree of crosslinking is determined
by the "insoluble fraction of the polymer." Ans. 10 (citing Spec. i-f34).
Therefore, both Pramanick and the instant application are soluble to a
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Application 13/221,245
degree. Appellants fail to provide evidence sufficient to distinguish the
degree of solubility for the polyester of the instant invention from that of
Pramanick and, as a result, Appellants have not met their burden.
Rejection B- Obviousness
The Examiner rejects claim 17 (among others) as unpatentable under
35 U.S.C. § 103(a) over Bruggeman as evidenced by the datasheet for
paclitaxel. Final Act. 6. The Examiner finds that "Bruggeman discloses a
method of combining a branched polyester comprising a biological active
agent" having low solubility in water. Id. The Examiner acknowledges that
Bruggeman "doesn't mention the acid number of the resulting branched
polymer." Id. But, the Examiner finds that because "the branched polyester
was made by polycondensation at 100 QC for 3 hours under vacuum in a
molar ration of 1: 1 ... which is substantially identical to the process
described in the instant specification" the polyesters are essentially the same
as claimed. Id. at 7.
Appellants argue that the polymers of Bruggeman are not the same as
the polymers of the instant invention. Appeal Br. 13. In particular,
Appellants contend that the polymer of Bruggeman is made in such a way
that "the Mw of Bruggeman's polymer is 6 times larger than the claimed
polyester, and the Mn of Bruggeman's polymer is about 4.5 times larger than
the claimed polyester." Id. at 14. Therefore, according to Appellants, the
polyesters cannot be the same as they do not possess the same
characteristics. Id.
Appellants' arguments are not persuasive of reversible error as
Appellants have not carried their burden of showing that the polyester of
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Application 13/221,245
Bruggeman does not necessarily possess the characteristics of the claimed
product. In re Best, 562 F.2d 1252, 1256 (CCP A 1977). The Examiner
finds that Bruggeman teaches a method of combining a branched polyester
with an insoluble active biological agent and that the polyester is prepared
by a substantially identical process to that claimed. Final Act. 6-7.
Appellants' argument that the molecular weight of the Bruggeman polyester
is much greater than the claimed polyester is not convincing because
molecular weight is not required by the claims. In addition, Appellants fail
to identify a connection between molecular weight of the polyester and the
claimed features. Moreover, the Examiner finds that the polyester of
Bruggeman has a molecular weight of 4 kDa, which is well within the range
of the molecular weights taught by Appellants' disclosure. Ans. 12;
compare Bruggeman i-fi-1289, 291, with Spec. i-f20. Appellants' argument that
the polyester identified by the Examiner (i.e., Bruggeman i-f289) is merely a
"pre-polymer which is then further modified" and that "Bruggeman does not
teach of suggest that the prepolymer itself is useful as a solubilizer" (Reply
Br. 5) is not supported by the evidence on this record. Bruggeman' s
teachings are not as limited as Appellants suggest. In particular, Bruggeman
broadly instructs that a polymer-resulting from a reaction of a polyol with
a polycarboxylic acid (e.g., citric acid}-can be combined with a
biologically active agent without modification to the polymer. Bruggeman
Abstract, i-fi-1275-277 and 285 (Table 3, no. 2). Accordingly, we sustain the
Examiner's rejection.
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CONCLUSION
Appellants have not identified reversible error in the Examiner's
rejection of claims 17-22, 24--25, and 28, under 35 U.S.C. § 103(a), as being
unpatentable over Pramanick as evidenced by the datasheet for methyl dopa.
Appellants have not identified reversible error in the Examiner's
rejection of claims 17-22, 24--26, and 30-33, under 35 U.S.C. § 103(a), as
being unpatentable over Bruggeman as evidenced by the datasheet for
paclitaxel.
Appellants have not identified reversible error in the Examiner's
rejection of claims 27-29, under 35 U.S.C. § 103(a), as being unpatentable
over Bruggeman as evidenced by the data sheet for paclitaxel and further in
view of Stumbe.
DECISION
For the above reasons, the Examiner's rejections of claims 17-22 and
24--33 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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