Ex Parte Nickisch et al

Patent Trial and Appeal Board

Sep 28, 2017

13193426 (P.T.A.B. Sep. 28, 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.
13/193,426 07/28/2011 Klaus Nickisch 6229-01500 7930
35690 7590 10/02/2017
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P.C.
P.O. BOX 398
AUSTIN, TX 78767-0398
EXAMINER
BADIO, BARBARA P
ART UNIT PAPER NUMBER
1628
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
patent_docketing@intprop.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS NICKISCH, KESAVARAM NARKUNAN,
BAISHAKHI DEBNATH, and BINDU SANTHAMMA1
Appeal 2017-004211
Application 13/193,426
Technology Center 1600
Before, JEFFREY N. FREDMAN, JOHN G. NEW, and RYAN H. FLAX,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state the real party-in-interest is Evestra, Inc. App. Br. 2.
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Application 13/193,426
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1 and 6, which stand rejected as
unpatentable under 35 U.S.C. § 103(a) as being obvious over the
combination of Grandadam et al. (US 5,173,483, December 22, 1992)
(“Grandadam”) and Teutsch et al. (US 4,912,097, March 27, 1990)
(“Teutsch”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CFAIMED INVENTION
Appellants’ invention is directed to compounds that either act as pure
antiprogestins or as antiprogestins with partial agonistic activity, and
methods of treating cancer using such compounds. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal, and recites:
1. A compound of formula (I):
X is O;
2
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R1, R2, R3, and R4 is a hydrogen atom;
R5 is a radical Y or an aryl radical that is optionally
substituted with Y,
Y is Ci-Cio-alkylacyl, C3-C10 cycloalkyl, C1-C10
alkanoyloxy or a five or six membered heterocyclic radical
containing up to three heteroatoms;
R6 is -OH, -OR8, -0C(0)R8,
R7 is a radical of formula CnFmH0 where n is 3, m is either
2 or 3; o is either 2 or 3; and m plus o is 5; and
R8 is H, alkyl, alkyloxy, or aryl.
App. Br. 29.
ISSUES AND ANALYSES
We adopt the Examiner’s findings and conclusions that the claims on
appeal are obvious over the cited prior art. We address Appellants’
arguments below.
Issue 1:
Appellants argue the Examiner erred in rejecting the claims because
Grandadam teaches derivatives in which alkynyl groups can be optionally
substituted with halogen, including fluorine (F), but alkenyl groups do not
include the option to be substituted with halogen. App. Br. 5.
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Analysis
Applicants argue that their claimed compound is directed to fluorine-
substituted alkenyl groups and, therefore the compounds set forth in
Grandadam do not disclose the claimed compounds. App. Br. 5.
The Examiner finds that Grandadam teaches:
[W] herein R2 has the above definitions and R3 and R4 are
individually selected from the group consisting of hydrogen,
-OH, -OAlk4, -OCOAlks, alkenyl and alkynyl of 2 to 8 carbon
atoms optionally substituted with halogen, -CO-CH2-OH....
and
[0]R3 is -CO-A'-Z and R4 is selected from the group consisting
of-C=C-R5, -CH^CH-Rs and -CH2=CH2-R5, Rs is selected from
the group consisting of hydrogen, halogen, trialkylsilyl of 3 to 12
carbon atoms, alkyl to 1 to 6 carbon atoms and phenyl, the latter
two being optionally substituted....
Ans. 7 (citing Grandadam col. 2,11. 45-55; claim 8).
Appellants reply that the cited passages of Grandadam teach
derivatives in which alkynyl groups can be optionally substituted with
halogen, but alkenyl groups do not include the option to be substituted.
App. Br. 5. At the very least, Appellants argue, the teachings of Grandadam
are ambiguous and leave doubt in a person of ordinary skill in the art as to
when halogen substitution is appropriate. Reply Br. 2. Appellants therefore
contend that, because Grandadam does not describe the synthesis of, or any
specific compounds that have, a halogenated R4 group, it would not have
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been possible for a person of ordinary skill in the art to definitively conclude
that Grandadam intended for alkenyl groups to be halogen substituted. Id.
We are not persuaded by Appellants’ argument. We interpret prior art
from the point of view of a person or ordinary skill in the art. See In re
Kahn, 441 F.3d 977, 985 (2006) (“A claimed invention is unpatentable if the
differences between it and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to a
person having ordinary skill in the pertinent art”).
Grandadam teaches: “R3 and R4 are individually selected from the
group consisting of..., alkenyl and alkynyl of 2 to 8 carbon atoms
optionally substituted with halogen, ....” Grandadam col. 2,11. 51-55. We
find that a person of ordinary skill in the art of biochemistry would
reasonably understand, first, that the phrase “alkenyl and alkynyl of 2 to 8
carbon atoms” means that R3 and R4 can consist of either “alkenyl groups of
2 to 8” carbons and “alkynyl groups of 2 to 8 carbons.” This interpretation
is supported by Grandadam’s use of the conjunction “and” between alkenyl
and alkynyl rather than reciting, for example: “alkenyl, alkynyl of 2 to 8
carbons, etc.” This interpretation is more reasonable and more consistent
with the ordinary usage of the relevant terms in the art..
Having determined that the ensuing modifying phrase “of 2 to 8
carbons” modifies both alkenyl and alkynyl groups, we similarly find that
the phrase “optionally substituted with halogen,” with no intervening
punctuation, modifies the descriptor “of 2 to 8 carbons” which, as we have
explained, most reasonably modifies both the alkenyl and alkynyl
substituents at R3 and R4. We consequently find that the Examiner has the
more reasonable interpretation of the grammar of this passage of
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Grandadam, and we further find that Grandadam teaches, contra Appellants’
argument, optionally fluorine-substituted alkenyl groups of 2 to 8 carbons.
Issue 2
Appellants next argue that the Examiner erred in rejecting the claims
because Teutsch fails to teach the limitations of claim 1 reciting “R5 is a
radical Y or an aryl radical that is optionally substituted with Y” and “Y is
Ci-Cio-alkylacyl, C3-C10 cycloalkyl, C1-C10 alkanoyloxy or a five or six
membered heterocyclic radical containing up to three heteroatoms.”
Appellants contend that Teutsch teaches only that the group
corresponding to R5 in the claimed compound is an alkynyl group. Id.
We are not persuaded by Appellants’ arguments. We agree with
Appellants that the Ri group of Teutsch (which corresponds to Appellants’
R5 group) is limited to “alkynyl of 2 to 8 carbon atoms optionally substituted
with at least one member of the group consisting of -OH, halogen,
trialkylsily 1 of 1 to 6 alkyl carbon atoms, alkoxy and alkylthio of 1 to 6
carbon atoms and dialkylamino of 1 to 6 alkyl carbon atoms....” Teutsch
col. 1,11. 43^47. Appellants’ claims on appeal do not recite an alkynyl
group at the R5 and we therefore agree with Appellants that Teutsch does not
teach this limitation.2
2 The Examiner’s Answer states, in response to Appellants’ argument, that:
“[A]s amended, the claimed R5 group is not taught by Teutsch. However, as
originally filed, the instant invention is inclusive of R5 as alkynyl.... Thus,
the combination of substituents in the 11 and 17 position as taught by
Teutsch is inclusive in the present invention. Ans. 8 (citing Claim 1
(definitions of R5 and Y), filed July 28, 2011). In other words, the Examiner
finds that the amended claims, which do not recite or otherwise include an
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However, Appellants’ claim 6 depends from claim 1 and therefore
necessarily includes and narrows the limitations of that claim. See 35 U.S.C.
§112, fourth paragraph (“A claim in dependent form shall be construed to
incorporate by reference all the limitations of the claim to which it refers”);
See also Monsanto Co. v. Syngenta Seeds, Inc., 503 F.3d 1352, 1358 (Fed.
Cir. 2007). Claim 6 recites:
6. The compound of claim 1, wherein the compound has the
structure:
wherein R7 is (E)-CH=CH-CF3, -CH2-CF=CF2, or -
CF2-CH=CH2.
Appellants’ claim 6 thus expressly recites the same group at the R5
locus that is expressly taught by Grandadam as a preferred embodiment at
column 2, lines 16—42:
Other preferred compounds of formula I are those wherein ...
Ri is selected from the group consisting of substituted aryl or
aralkyl and notably:
alkynyl group, nevertheless are “inclusive” of alkynyl, despite the claim
term “Ci-Cio alkynyl” having been deleted via amendment by Appellants.
Compare claim 1, filed July 28, 2011, with claim 1, App. Br. 14. This is
error upon the part of the Examiner. Amended claims are to be evaluated
upon their face, and not inclusive of limitations previously and expressly
omitted by amendment. See Amendments to the Claims, filed June 8, 2015.
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which is identical to Appellants’ R5 of claim 6 (and therefore included in
claim 1).
In other words, because, as we have explained supra, Grandadam
teaches the functional moiety at the R7 location, and also teaches the
functional moiety at the R5 location, Grandadam expressly teaches all of the
limitations recited in claim 6 and, by extension, claim 1. We are
consequently not persuaded by Appellants’ arguments.
Issue 3
Appellants argue that Teutsch teaches away from Appellants’ claimed
invention. App. Br. 8.
Analysis
Appellants argue that a person of ordinary skill in the art would not be
motivated to modify the compounds of Grandadam with fluorinated side
chains, as suggested by Teutsch, in order to find compounds having both
anti-progestomimetic activity and minimal antiglucocorticoid effects. App.
Br. 7. According to Appellants, the modifications set forth in Teutsch, were
expressly made to create compounds that have both anti-progestomimetic
activity and antiglucocorticoid effects. Id. at 8 (citing Teutsch col. 1,11. 18-
22; col. 63,11. 35^40). Appellants contend that Teutsch thus teaches away
from compounds that have minimal antiglucocorticoid effects and that a
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person of ordinary skill in the art, looking to prepare compounds having
anti-progestomimetic activity and minimal antiglucocorticoid effects, would
not turn to Teutsch to modify the compounds, since Teutsch teaches
modifications that promote antiglucocorticoid effects.
We are not persuaded by Appellants’ arguments. As we have
explained supra, Grandadam teaches all of the limitations of claim 1 and
further teaches that these compounds have anti-progestomimetic activity.
See Grandadam col. 1,11. 22-31. Appellants point to no teachings of
Grandadam, or any other reference, that teaches or suggests that its
compositions have antiglucocorticoid effects. Because we find the teachings
of Teutsch unnecessary to the obviousness analysis of Appellants’ amended
claims on appeal, the teachings of Teutsch with respect to antiglucocorticoid
activity do not dictate our decision here.
For the same reasons, we find Appellants’ arguments with respect to
the unpredictability in the art with respect to the relative activity of
compositions combining the teachings of Teutsch and Grandadam to be
similarly not persuasive. Grandadam teaches compounds with good anti-
progestomimetic activity, expressly including the compounds recited in
Appellants’ claims. As such, the question of whether a person of ordinary
skill in the art would have had a reasonable expectation of success in
combining the teachings of Grandadam and Teutsch to obtain a compound
with strong anti-progestomimetic activity and low anti-glucocorticoid
activity is irrelevant. We consequently affirm the Examiner’s rejection of
the claims.
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DECISION
The Examiner’s rejection of claims 1 and 6 as unpatentable under 35
U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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