Ex Parte Markou et al

Board of Patent Appeals and Interferences

Jun 15, 2012

10527525 (B.P.A.I. Jun. 15, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/527,525 10/14/2005 Athina Markou TSRI 897.1 3218
26621 7590 06/15/2012
THE SCRIPPS RESEARCH INSTITUTE
OFFICE OF PATENT COUNSEL, TPC-8
10550 NORTH TORREY PINES ROAD
LA JOLLA, CA 92037
EXAMINER
CARTER, KENDRA D
ART UNIT PAPER NUMBER
1627
MAIL DATE DELIVERY MODE
06/15/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ATHINA MARKOU, PAUL KENNY,
NEIL PATERSON, and SVETLANA SEMENOVA
__________

Appeal 2011-001816
Application 10/527,525
Technology Center 1600
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a process of
treating drug dependence. The Examiner entered rejections for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 1-3, 6, 7, 9, 16, 27, 28, and 32 stand rejected and appealed
(App. Br. 8). Claim 1 is representative and reads as follows:
1. A method for treating drug dependence in a subject,
comprising administering to a subject with drug dependence an
effective amount of (a) a first antagonist which modulates
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metabotropic glutamate receptor 2 [mGluR2] and/or metabotropic
glutamate receptor 3 [mGluR3], and (b) a second antagonist which
modulates metabotropic glutamate receptor 5 [mGluR5], thereby
treating the disorder; wherein the drug dependence is selected from
the group consisting of nicotine addiction, alcohol addiction, opiate
addiction, amphetamine addiction, cocaine addiction, and
methamphetamine addiction.

The following rejections are before us for review:
(1) Claims 1-3, 6, 7, and 16, under 35 U.S.C. § 103(a) as obvious over
Adam1 combined with either Corsi2 or Chiamulera3 (Ans. 4-5); and
(2) Claims 9, 27, 28, and 32, under 35 U.S.C. § 103(a) as obvious
over Chiamulera, Adam, and admitted prior art appearing in the
Specification at pages 14 and 16 (Ans. 6-8).
DISCUSSION
The Examiner concluded that it would have been obvious to treat drug
dependence with an mGluR2/3 antagonist as well as an mGluR5 antagonist,
as recited in claim 1, based on Adam’s teaching that mGluR2/3 antagonists
were useful for treating nicotine/opiate dependence, combined with the
teachings in Corsi or Chiamulera that mGluR5 antagonists were similarly
useful for treating drug dependence (Ans. 4-5 (citing In re Kerkhoven, 626
F.2d 846, 850 (CCPA 1980))).

1 U.S. Patent No. 6,407,094 B1 (issued June 18, 2002).
2 U.S. Patent App. Pub. No. 2003/0195139 A1 (published October 16,
2003).
3 Christian Chiamulera et al., Reinforcing and locomotor stimulant
effects of cocaine are absent in mGluR5 null mutant mice, 4 NATURE
NEUROSCIENCE 873-74 (2001).
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As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
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.

We agree with Appellants that a preponderance of the evidence does
not support the Examiner’s prima facie case of obviousness. Specifically,
based on the totality of the record, we conclude that Appellants have
advanced sufficient evidence to rebut the Examiner’s prima facie case of
obviousness.
As explained in the Markou Declaration,4 an ordinary artisan would
have expected that exposing mGluR2/3 and mGluR5 receptors to their
antagonists would have “opposite neurochemical and behavioral effects”
(Markou Declaration ¶ 4(ii)). This is borne out by the disclosure in Mills,5
cited in the Markou Declaration, which discloses that the mGluR5 antagonist
MPEP “reduced EAA [extracellular excitatory amino acid] concentrations . .
. while treatment with LY 341495 [a group-II (mGluR2/3) antagonist]
increased EAA levels” in a rat spinal cord injury model (Mills 835).
Thus, while the references cited by the Examiner might separately
disclose treating drug dependence with mGluR2/3 antagonists and mGluR5

4 Declaration of Dr. Athina Markou under 37 C.F.R. § 132 (executed
September 2, 2008). Note that the first page of the Declaration inadvertently
states that the declaration is made under 37 C.F.R. § 131.
5 Charles D. Mills et al., Involvement of metabotropic glutamate receptors in
excitatory amino acid and GABA release following spinal cord injury in rat,
79 J. NEUROCHEM. 835-48 (2001).
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Application 10/527,525

4
antagonists, Appellants have advanced essentially a direct side-by-side
comparison from the prior art demonstrating that the two types of
compounds administered in the claimed processes have opposing
physiological activities. In contrast, the Examiner provides no convincing
response explaining why an ordinary artisan would have used compounds
with opposite physiological activities in the claimed combination therapy.
We acknowledge the oft-stated directive in In re Kerkhoven that it is
prima facie obvious to combine two compositions each of
which is taught by the prior art to be useful for the same
purpose, in order to form a third composition to be used for the
very same purpose. . . .[T]he idea of combining them flows
logically from their having been individually taught in the prior
art.
In re Kerkhoven, 626 F.2d at 850.
Here, however, unlike the situation in Kerkhoven, Appellants have
advanced direct evidence that an ordinary artisan would have expected the
two types of antagonists administered in the claimed processes to have
opposing physiological activities. Thus, as the Examiner has not provided a
clear evidence-based explanation as to why an ordinary artisan would have
been prompted to use compounds having opposing physiological activities in
the claimed combination therapy processes, we agree with Appellants that
the preponderance of the evidence does not support the Examiner’s prima
facie case.

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Application 10/527,525

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We therefore reverse the Examiner’s rejection of claims 1-3, 6, 7, and
16, as obvious over Adam and either Corsi or Chiamulera. As we conclude
that the above analysis governs the Examiner’s rejection of claims 9, 27, 28,
and 32 over Chiamulera, Adam, and admitted prior art, we also reverse that
rejection.

REVERSED

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