Ex Parte Fu et al

Patent Trial and Appeal Board

Oct 26, 2017

14164898 (P.T.A.B. Oct. 26, 2017)

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.
14/164,898 01/27/2014 Xing Fu WYN/2060U S 2/SMM 7648
94591 7590
Johnson Matthey Inc.
435 Devon Park Dr.
Suite 600
Wayne, PA 19087-1998
EXAMINER
BERRY, LAYLA D
ART UNIT PAPER NUMBER
1673
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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):
J ohnsonMattheyIP @ matthey. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XING FU and ALBERCHT ZUMBRUNN1
Appeal 2017-003029
Application 14/164,898
Technology Center 1600
Before DEMETRA J. MILLS, RICHARD J. SMITH,
and JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
ribofuranose derivative which have been rejected as obvious and for
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse and present new grounds for rejection under 37 C.F.R.
§ 41.50(b).
1 Appellants identify the Real Party in Interest as Johnson Matthey Public
Limited Company. Appeal Br. 1.
Appeal 2017-003029
Application 14/164,898
STATEMENT OF THE CASE
Methyl-2-deoxyriboside (MDR) is a ribofuranose derivative that is
useful as an intermediate in synthesis of pharmaceutical compositions.
Spec. 1. Synthesis of MDR often results in the production of a byproduct,
methyl-2-deoxyribopyranoside (MDRP). Id. The Specification describes a
method for removing MDRP from a reaction product containing MDR and
MDRP resulting in MDR which is essentially free of MDRP. Spec. 2.
Claims 1—3 and 6—162 are on appeal. Claims 1,15, and 16 are the
sole independent claims and read as follow:
1. A composition comprising methyl-2-deoxyriboside and
containing less than 0.4 wt% of methyl-2-deoxyribopyranoside,
based on the combined weight of methyl 1-2-deoxyriboside and
methyl 1-2-deoxyribopyranoside.
15. A composition comprising [(2R, 3S)-3-acetoxy-5-
methoxytetrahydrofuran-2-yl]methyl acetate and less than 0.4
wt% of methyl-2-deoxyribopyranoside.
16. A composition comprising (4S,5R)-5-
(acetoxymethyl)tetrahydrofuran-2,4-diyl diacetate and less than 0.4
wt% of methyl-2-deoxyribopyranoside.
The claims stand rejected as follows3:
2 Appellants list claims 13—15, 17—19, 23—31, 34—37, 39, and 40 as subject
to appeal. Appeal Br. 2. A review of the prosecution history reveals that
claims 17—19, 23—31, 34—37, 39, and 40 were never presented in this
application. The Examiner’s listing of the claims on appeal is correct. Final
Act. 1.
3 The Examiner also rejected claims 1—3 and 11—16 under 35 U.S.C. § 112,
first paragraph, for failing to satisfy the written description requirement.
Final Act. 2—3. The Examiner has withdrawn that rejection. Ans. 7.
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Application 14/164,898
Claims 1—3 and 6—14 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over CN ’0844 in view of Ness5 and Ludek.6
Claims 1—3 and 6—16 have been rejected under 35 U.S.C. § 103(a) as
unpatentable over Gold7 in view of CN ’084, Ness, and Ludek.
Claims 1—3 and 6—16 have been rejected for obviousness-type double
patenting over claims 1—18 of US 8,637,649 B2.
OBVIOUSNESS
CLAIMS 1-3 AND 6-14
Issue
The issue with respect to this rejection is whether a preponderance of
evidence supports the Examiner’s finding that claims 1—3 and 6—14 would
have been obvious over CN ’084 combined with Ness and Ludek.
The Examiner finds that CN ’084 discloses the synthesis of MDR
where the resulting product is 99.6% pure. Final Act. 4. The Examiner
finds that Ness teaches that sodium periodate can be used to remove MDRP
from a composition containing both MDR and MDRP. Id. The Examiner
4 CN 101307084 A, published Nov. 19, 2008 (“CN ’084”). Citations are to
the English translation.
5 Ness et al., 2-Deoxy-d-ribose. VII. Crystalline 2-Deoxy-3,5,di-0-p-
nitrobenzoyl-D-ribosyl Chloride and Related Derivatives, 26 J. Organic
Chem. 2895 (1961) (“Ness”).
6 Ludek et al, A greener enantios elective synthesis of the antiviral agent
North-methanocarbathymidine (N-MCT) from 2-deoxy-D-ribose, 65
Tetrahedron 8461 (2009) (“Ludek”).
7 A. Gold and R. Sangaiah, 1, 3, 5-TRI-0-Acetyl-2-Deoxy-a, f3 -D-Erythro-
Pentofuranose from 2-Deoxy-D-Erythro-Pentose, 9 Nucleosides &
Nucleotides 907 (1990) (“Gold”).
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Application 14/164,898
finds that Ludek teaches that lowering the temperature at which MDR is
formed will result in a reduction of the amount of MDRP formed. Final Act.
4—5. The Examiner concludes that
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to prepare purified
methyl-2-deoxyriboside. The skilled artisan would do so in
order to improve yield and decrease the amount of unusable by­
product. MPEP 2144.04 states that purer forms of known
products may be patentable, but the mere purity of the product,
by itself, does not render the product unobvious. Factors to be
considered in determining whether a purified form of an old
product is obvious over the prior art include whether the
claimed chemical compound or composition has the same
utility as closely related materials in the prior art, and whether
the prior art suggests the particular form or structure of the
claimed material or suitable methods of obtaining that form or
structure. In this case, methyl-2-deoxyriboside is the intended
product in the prior art so it has the same utility and the same
structure as the purer form. The CN 101307084 A1 product is
99.6% pure, and the prior art also teaches two other methods to
improve purity - removing by-products by oxidation and
lowering the reaction temperature. The skilled artisan could
also repeat the distillation purification taught by CN 101307084
A1 to achieve a higher purity. For these reasons, the skilled
artisan would have a reasonable expectation of success in
achieving a purified product.
Final Act. 5.
Appellants contend that the references do not teach or suggest a
composition comprising MDR with less than 0.4 wt% MDRP. Appeal Br. 3.
Appellants argue that CN ’084 teaches production of MDR which is only
99.6% pure. Appeal Br. 4. Appellants argue that Ness does not teach or
suggest a composition containing less than 0.4 wt% MDRP and that one
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Application 14/164,898
skilled in the art would not be motivated to use the process of Ness to
remove MDRP. Appeal Br. 4. Appellants argue that while Ludek teaches
reducing the reaction temperature to limit the production of MDRP, Ludek
produces a composition which has 4 wt% MDRP. Appeal Br. 5.
Appellants contend that one skilled in the art would not be motivated to use
the method of Ludek.
Appellants argue that the Examiner has not shown that repeating the
purification steps of CN ’084 or adding the purification steps of Ness or
Ludek to CN ’084 would result in the claimed composition. Appeal Br. 6.
Principles of Law
[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Combining references can be based on common sense as long as the
reasoning is explained sufficiently. See Perfect Web Techs., Inc. v. InfoUSA,
Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009).
Analysis
We agree with Appellants that the Examiner has failed to establish a
prima facie case of obviousness. As Appellants point out, the Examiner has
failed to point to any objective evidence that adding periodate to or distilling
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the product of CN ’084 would further reduce the amount of MDRP present
in the composition described in CN ’084. Reply Br. 3.
The Examiner appears to be relying on common sense in reaching the
conclusion that the addition of periodate or distillation would remove
additional MDRP from the composition described in CN ’084. Ans. 10. We
do not find this to be sufficient. The Examiner has not shown that repeated
addition of periodate or distillation would remove additional MDRP over
what has already been removed by the process disclosed in CN ’084.
Conclusion of Law
We conclude that the Examiner’s stated rationale in the statement of
the pending rejection does not support the Examiner’s conclusion that the
claims would have been obvious over CN ’084 combined with Ness and
Ludek.
GOLD COMBINED WITH CN ’084, NESS, AND LUDEK
Appellants argue that Gold, like CN ’084, Ness, and Ludek does not
teach forming a composition with less than 0.4 wt% MDRP and that there in
nothing in Ludek to suggest that repeated distillation or periodate treatment
will yield such a product. Appeal Br. 7—8. As with the process of CN ’084
discussed above, the Examiner has not produced any objective evidence that
serial distillation or periodate treatment will produce a composition having
less than 0.4 wt% MDRP. We therefore reverse this rejection.
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NEW REJECTIONS
CLAIMS 1-3 AND 6-14 ARE OBVIOUS OVER NESS
As discussed above, Ness discloses a method for reducing the amount
of MDRP present in a composition comprising MDR by the addition of
periodate. Ness 2896. Periodate is added in almost equal amounts to the
reaction product and stirred for 18 hours at room temperature. This is
similar to the process used by Appellants except that Appellants add
periodate in two batches, first for about 6 hours and then for 4 hours and use
a total of 13.6 grams of periodate. Spec. 7. Given the similarity of the two
processes, one skilled in the art would expect the processes to yield similar
results, i.e., little or no MDRP present in the final product. Thus, the
claimed composition would have been obvious in view of the teachings of
Ness.
This conclusion is supported by Ness in that when the MDR is reacted
to form 2-deoxy-3,5-di-0-p-nitrobenzoyl-D-riboside, and the final product is
pure. Ness 2897. This suggests that the MDR used is free of MDRP. Thus,
the burden shifts to Appellants to show that the MDR in Ness does not meet
the limitations of the claim. In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
Appellants have produced no evidence that the MDR produced in
Ness does not contain less than 0.4 wt% MDRP. Instead, Appellants focus
on the differences in the methods used by Ness versus that disclosed in the
present Specification. Appeal Br. 4, Reply Br. 2. The instant claims,
however, are directed to a composition containing MDR, not the process for
producing MDR. The process for making MDR is irrelevant to the
patentability of MDR. “The patentability of a product does not depend on
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its method of production. If the product in a product-by-process claim is the
same as or obvious from a product of the prior art, the claim is unpatentable
even though the prior product was made by a different process.” In re
Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985) (citation omitted).
Appellants have argued that the claimed composition would not have
been obvious over Ness in that the process used by Ness is so complex that
one skilled in the art would not be motivated to use the process. Appeal Br.
4. Appellants’ claims, however, are directed to a product, not a process. See
Claim 1 above. Thus, the process used to make the product is irrelevant to
the issues of novelty or obviousness. “[The] patentability of a claim to a
product does not rest merely on a difference in the method by which that
product is made. Rather, it is the product itself which must be new and
unobvious.” In re Pilkington, 411 F.2d 1345, 1348 (CCPA 1969).
NEW REJECTION CLAIMS 15 AND 16
GOLD IN VIEW OF NESS
Gold teaches the production of R2R, 3S)-3-acetoxv-5-
methoxytetrahydrofuran-2-yl]methyl acetate and (4S,5R)-5-
(acetoxymethyl)tetrahydrofuran-2,4-diyl diacetate from MDR. Gold 908.
As discussed above, Ness teaches the producing of MDR followed by the
removal of MDRP resulting in a product that is free of MDRP. Ness 2896—
97. It would have been obvious to one skilled in the art to use the MDR
produced by Ness in in the method taught by Gold to yield reaction products
essentially free of MDRP. One would have been motivated to combine the
teachings of the references in that Ness teaches that when the MDR
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produced by the disclosed method is further reacted to form another product,
the resulting product is pure. Ness 2897.
SUMMARY
We reverse the rejections under 35 U.S.C. § 103(a).
We enter a new rejection of claims 1—3 and 6—14 under 35 U.S.C.
§ 103(a) as unpatentable over Ness.
We enter a new rejection of claims 15 and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Gold in view of Ness.
TIME PERIOD FOR RESPONSE
This decision contains a new grounds of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50 provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
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reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
REVERSED
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