10891787 (B.P.A.I. Sep. 21, 2010)

Ex Parte Germeyer et al

Board of Patent Appeals and InterferencesSep 21, 2010

10891787 (B.P.A.I. Sep. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte SABINE GERMEYER, CHRISTOPHER JOHN MONTAGUE MEADE, HELMUT MEISSNER, GERD MORSCHHAEUSER, MICHEL PAIRET, SABINE PESTEL, MICHAEL P. PIEPER, GERALD POHL, RICHARD REICHL, GEORG SPECK, and INGO KONETZKI __________ Appeal 2009-010346 Application 10/891,787 Technology Center 1600 __________ Before TONI R. SCHEINER, DONALD E. ADAMS, and STEPHEN WALSH, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING1 Sabine Germeyer et al. request rehearing of the Decision on Appeal entered March, 29, 2010. The Decision affirmed the rejection of the claims 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-010346 Application 10/891,787 2 on grounds of anticipation and of nonstatutory obviousness-type double patenting. ANTICIPATION The Decision affirmed a rejection under § 102, which reads, in part: A person shall be entitled to a patent unless – . . . (e) the invention was described in . . . (2) a patent granted on an application for patent by another in the United States before the invention by the applicant for patent . . . . Appellants contend that the Decision was “based on a possible misapprehension of the facts and a misapplication of the law.” (Req. Reh’g 1.) The Decision agreed with the Examiner’s finding that Germeyer taught a composition comprising the compound scopine 9-methylfluorene-9- carboxylate methobromide, and a betamimetic, including specific betamimetics listed in Appellants’ claim. Appellants do not dispute that scopine 9-methylfluorene-9-carboxylate methobromide is a compound within Appellants’ claimed formula 1. Appellants contend that the Examples in the Germeyer reference which refer to an “active substance 1” “do not specifically teach a pharmaceutical composition containing the specific compound of formula 1 of appellants’ claim 1” because Germeyer’s “‘active substance 1’ term is only a generic reference to any of the many compounds of Germeyer’s generic formula.” (Req. Reh’g 1-2.) Appellants contend that Finding of Fact 2 in the Decision refers to a generic teaching, and that Germeyer discloses betamimetics as one of eight classes of possible additional actives to combine with its compounds of generic formula 1. (Id.) We agree that Finding of Fact 2 referred to a Appeal 2009-010346 Application 10/891,787 3 generic disclosure. Finding of Fact 4, however, identified a specific compound. Summarizing, Appellants contend that “Germeyer does not disclose any example or specific embodiment of a composition which contains, specifically, a compound of formula 1 of claim 1 on appeal,” and “[t]o arrive at the claimed invention from Germeyer one has to: 1) make a selection of a specific compound meeting appellants’ formula 1 from a broader generically encompassing group of compounds, 2) make a selection from the eight possible classes of additional actives to select a betamimetic, 3) make a selection of a specific betamimetic in appellants’ list from a broader generic list of betamimetics in Germeyer, and 4) then combine these selections.” (Req. 2-3.) Appellants contend that the legal precedent does not support a finding of anticipation where it is necessary to make multiple selections and combine them, citing In re Petering and In re Schaumann. (Req. 3.) First, we disagree that Appellants’ analytical sequence is required by these facts. Instead, the more apt sequence is: 1) recognize that Appellants’ formula 1 genus includes Germeyer’s Example 6 compound scopine 9- methylfluorene-9-carboxylate methobromide, 2) recognize that Germeyer taught pharmaceutical compositions comprising scopine 9-methylfluorene-9- carboxylate methobromide and each of the betamimetics Germeyer listed at col. 13, 3) recognize that Appellants are now claiming nearly all of the scopine 9-methylfluorene-9-carboxylate methobromide containing compositions Germeyer described, and 4) acknowledge that when a generic claim defines compositions described in prior art, the claim is anticipated. That Appellants choose not to claim all the compositions with scopine 9- methylfluorene-9-carboxylate methobromide that Germeyer disclosed does Appeal 2009-010346 Application 10/891,787 4 not mean that Germeyer did not describe some particular compositions that Appellants now claim. Appellants’ generalized argument about “active substance 1” does not give due consideration to the specific facts on which the rejection was based. First, Germeyer’s Example 6 particularly described scopine 9- methylfluorene-9-carboxylate methobromide, its preparation, (FF4) and its combination into a composition with a betamimetic (FF2). In their Appeal Brief, Appellants did not dispute that the compound scopine 9- methylfluorene-9-carboxylate methobromide is a compound of claim 1’s formula 1, and do not dispute it now. Appellants also do not dispute that Germeyer called particular attention to this compound by claiming it. (FF6.) In view of Appellants’ contention that too much “picking and choosing” is involved in Germeyer’s disclosure to satisfy the requirements of anticipation, we have reviewed the facts. Germeyer taught combining certain betamimetics with such compounds as scopine 9-methylfluorene-9- carboxylate methobromide. (FF2.) Our decision agreed with the Examiner’s finding that “many” of Germeyer’s col. 13 betamimetics are now listed in Appellants’ claim 1. (FF3.) We note now that of Germeyer’s 25 betamimetics, 24 are listed in Appellants’ claim 1. By listing the 25 betamimetics in the format Germeyer used, Germeyer taught (in the order Germeyer lists the betamimetics) such compositions as: scopine 9-methylfluorene-9-carboxylate methobromide + bambuterol scopine 9-methylfluorene-9-carboxylate methobromide + bitolterol scopine 9-methylfluorene-9-carboxylate methobromide + carbuterol scopine 9-methylfluorene-9-carboxylate methobromide + clenbuterol Appeal 2009-010346 Application 10/891,787 5 and 21 more. Including the four just listed, Appellants claim 24 of the 25 compositions Germeyer taught using the scopine 9-methylfluorene-9- carboxylate methobromide of Example 6. Although Appellants’ generic claim 1 includes a total of 43 compositions using just the scopine 9- methylfluorene-9-carboxylate methobromide of Germeyer’s Example 6 (because claim 1 lists more betamimetics than Germeyer taught), it is anticipated by Germeyer’s disclosure of 24 of those compositions. Second, Appellants’ legal argument is essentially that the Petering and Schaumann precedent applies to compound cases, but not to composition cases if the invention is claimed as one or more selections from groups. Appellants provide no authority to support the notion that the Petering or Schaumann principle does not apply in anticipation cases unless the claims are to “compounds.” Germeyer described compositions comprising scopine 9-methylfluorene-9-carboxylate methobromide with a betamimetic from the listed group, Appellants now claim many of those compositions, and claim 1 is anticipated by many of the compositions Germeyer explicitly described. See Titanium Metals Corp. v. Banner, 778 F.2d 775, 781 (Fed.Cir.1985) (“when, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art”) (emphasis added). Appellants argue that “picking, choosing and combining” would be required to identify the claimed invention in Germeyer, but “an analogous need for such picking and choosing was found in Arkley to preclude a finding of anticipation.” (Req. 4.) We disagree that picking and choosing would be required because Germeyer’s Example 6 taught compositions comprising scopine 9-methylfluorene-9-carboxylate methobromide and a Appeal 2009-010346 Application 10/891,787 6 betamimetic selected from a list. Plainly, we agree that “combining” the scopine 9-methylfluorene-9-carboxylate methobromide of Example 6 with one of the listed betamimetics would be required because Germeyer explicitly taught the combinations. Put another way, Germeyer described twentyfive compositions, each made with scopine 9-methylfluorene-9- carboxylate methobromide and a listed betamimetic. Appellants now claim twentyfour of the compositions comprising scopine 9-methylfluorene-9- carboxylate methobromide that Germeyer taught, among others Appellants claim. That Appellants claim some but not all of Germeyer’s compositions does not overcome the anticipation rejection. NONSTATUTORY OBVIOUSNESS-TYPE DOUBLE PATENTING Appellants repeat their contentions that “[t]he secondary reference relied on to support the rejections would not be applicable as prior art under 35 U.S.C. § 103” (Req. Reh’g 5) and that “this cannot be a proper application of the law” (id. at 6.) The Decision explained why this argument was unpersuasive, and on rehearing we adhere to the reasoning in the original Decision. CONCLUSIONS We have considered Appellants’ contentions but decline to change the Decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED Appeal 2009-010346 Application 10/891,787 7 lp MICHAEL P. MORRIS BOEHRINGER INGELHEIM USA CORPORATION 900 RIDGEBURY ROAD P. O. BOX 368 RIDGEFIELD CT 06877-0368