Ex parte EHRGOTT et al.

Board of Patent Appeals and Interferences

Apr 8, 1998

08148764 (B.P.A.I. Apr. 8, 1998)

Application for patent filed November 4, 1993. 1
According to appellants, this application is a division of
Application No. 07/712,169, filed June 5, 1991; which is a
division of Application No. 07/473,266, filed January 31,
1990, now U.S. Patent No. 5,047,554, issued September 10,
1991; which is a continuation-in-part of Application No.
07/340,113, filed April 18, 1989, now abandoned.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte FREDERICK J. EHRGOTT, CARL J. GODDARD
and GARY R. SCHULTE

Appeal No. 96-2721
Application No. 08/148,7641

ON BRIEF

Before KIMLIN, ELLIS and OWENS, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-2721
Application No. 08/148,764
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This is an appeal from the final rejection of claims 2-8,
50-59, 65-69, 75-79, 86, 87, 90-108, 112 and 113, all the
claims remaining in the present application. A copy of
illustrative claim 112 is appended to this decision.
The examiner relies upon the following references as
evidence of obviousness:
Kadin 4,569,942 Feb. 11, 1986
Young et al. (Young) 4,962,117 Oct. 9, 1990
(filed Nov. 2, 1988)
Appellants' claimed invention is directed to 3-
substituted-2-oxindole derivatives of the recited formula.
According to appellants, the claimed compounds find utility in
treating inflammatory conditions, in eliciting an analgesic
response, in treating interleukin-1 mediated disorders and
immune disfunction, in inhibiting prostaglandin H synthase2
and in inhibiting biosynthesis of interleukin-1 in a mammal.
The appealed claims stand rejected under 35 U.S.C. § 103
as being unpatentable over Kadin, taken alone, or in
combination with Young.
Upon careful consideration of the opposing arguments
presented on appeal, we agree with appellants that the prior
art applied by the examiner fails to establish a prima facie
Appeal No. 96-2721
Application No. 08/148,764
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case of obviousness for the claimed subject matter.
Accordingly, we will not sustain the examiner's rejections.
We consider first the rejection of the appealed claims
over Kadin taken alone. For the reasons set forth at pages 6-
8 of appellants' Brief, we find that Kadin fails to support a
prima facie case of obviousness for the claimed compounds.
Suffice it to say that the examiner recognizes that Kadin
discloses hydrogen or alkyl groups having one to three carbon
atoms as the substituent corresponding to appellants' A , but1
not the claimed substituents, and we concur with appellants
that the examiner's reliance on Kadin's substituent X for the
equivalency of hydrogen and halogen substituents is misplaced.
Kadin's teaching of equivalency of hydrogen and halogen
substituents at the X position does not establish the
equivalency of such substituents at Kadin's R* position.
Concerning the examiner's rejection over Kadin in view of
Young, we agree with appellants that the compounds of Kadin
and Young are not sufficiently similar in chemical structure
to motivate one of ordinary skill in the art to modify the R*
substituents of Kadin in the manner proposed by the examiner
to arrive at the claimed compounds. To wit, the bonding
Appeal No. 96-2721
Application No. 08/148,764
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between the aryl group and the heterocyclic group is
substantially different in the compounds of Kadin and Young
(Young employs a Y substituent as a linking group between the
aryl and heterocyclic groups), and the compounds of Kadin have
only one non-carbon atom in the heterocyclic ring whereas the
compounds of Young have two non-carbon atoms in the
heterocyclic ring (X of Young is defined at column 3, lines4
19 et seq.).
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
JOAN ELLIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
Appeal No. 96-2721
Application No. 08/148,764
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Gregg C. Benson
Pfizer Inc.
Eastern Point Road
Groton, CT 06340
Appeal No. 96-2721
Application No. 08/148,764
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APPENDIX
112. A compound of the formula
and the pharmaceutically-acceptable salts thereof, wherein
X is H, F, C1, Br, (C -C )alkyl, (C -C )cycloalkyl, NO ,1 6 3 8 2
CF , CN, SH, S(O) R , OR , COR or CONR R ;3 m 3 4 4 4 5
Y is H, F, Cl, Br, (C -C )alkyl, (C -C )cycloalkyl, NO ,1 6 3 8 2
CF ,3
CN, SH, S(O) R , OR , COR or CONR R19;q 17 18 18 18
R is H, alkanoyl of two to ten carbon atoms, cycloalkyl-1
carbonyl of five to seven carbon atoms, phenylalkanoyl of
seven to ten carbon atoms, chlorobenzoyl, methoxybenzoyl,
thenoyl, omega-alkoxycarbonylalkanoyl, said alkoxy having one
to three carbon atoms and said alkanoyl having three to five
carbon atoms, alkoxy carbonyl of two to ten carbon atoms,
phenoxycarbonyl,
Appeal No. 96-2721
Application No. 08/148,764
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1-(acyloxy)alkyl wherein acyl has one to four carbon atoms and
said alkyl has two to four carbon atoms, 1-
(alkoxycarbonyloxy)-alkyl wherein said alkoxy has two to five
carbon atoms and said alkyl has one to four carbon atoms,
alkyl of one to three carbon atoms, alkylsulfonyl of one to
three carbon atoms, methylphenyl-sulfonyl or
dialkylphosphonate wherein each of said alkyl is one to three
carbon atoms;
R is COR , CONR R , (C -C )alkyl, (C -C )cycloalkyl, phenyl2 6 7 8 1 6 3 8
or mono- or disubstituted phenyl wherein the substituent or
substituents are each C1, F, Br, (C -C )alkyl, (C -C )alkoxy or1 6 1 6
CF ;3
Q is Q -A ;2 1
A is F, Cl, Br, I,1
CF , OR , S(O) R ,3 9 P 10
COOR , CONR R , CN,11 9 11
NO , COR , CH OR , OCOR , NR R , N(R )COR , SO NR R ;2 2 210 11 10 9 11 9 11 9 11
Q is2
Appeal No. 96-2721
Application No. 08/148,764
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m, n, p and q are each zero, one or two;
w is O, S or NR ;11
R , R , R and R are each (C -C )alkyl or phenyl; R , R ,3 6 10 17 5 81 6
R and R are each H, (C -C )alkyl or phenyl; and R , R , R 11 19 4 7 91 6
and R are each H or (C -C )alkyl.18 1 6