Ex Parte Palle et al

Board of Patent Appeals and Interferences

Jul 20, 2012

11555951 (B.P.A.I. Jul. 20, 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.
11/555,951 11/02/2006 Venkata Raghavendra Palle BULK 3.0-180 7842
45776 7590 07/20/2012
DR. REDDY''S LABORATORIES, INC.
200 SOMERSET CORPORATE BLVD
SEVENTH FLOOR
BRIDGEWATER, NJ 08807-2862
EXAMINER
COUGHLIN, MATTHEW P
ART UNIT PAPER NUMBER
1626
MAIL DATE DELIVERY MODE
07/20/2012 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 VENKATA RAGHAVENDRA PALLE,
ASHOK JERAMBHAI KALARIA, and SANDIP ASHOK SHELKE
____________

Appeal 2011-004417
Application 11/555,951
Technology Center 1600
____________

Before DONALD E. ADAMS, DEMETRAL J. MILLS,
and ERIC GRIMES, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1-6 and 20-25
(App. Br. 5; Reply Br. 3; Ans. 3).1,2 We have jurisdiction under 35 U.S.C.
§ 6(b).

1 Pending “claims 26 and 27 hav[e] been described as allowable and
therefore [are] not . . . addressed in this appeal” (App. Br. 5; Reply Br. 3;
Ans. 3).
2 Examiner objected to claims 7 and 8 apparently because they depend from
a rejected claim (Ans. 3; Reply Br. 8).
Appeal 2011-004417
Application 11/555,951
2
STATEMENT OF THE CASE
The claims are directed to a process for preparing an ester (claims 1-5,
20, and 21); and a process for preparing letrozole comprising reacting the
ester prepared in claim 1 with 1,2,4-triazole to form letrozole (claims 6 and
22-25). Claim 1 is representative and is reproduced in the Claims Appendix
of Appellants’ Brief.
Claims 1-6 and 20-25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bowman,3 Wang,4 and Lang.5
We reverse.

ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Examiner relies on Bowman and Wang to suggest a synthetic
protocol leading to the production of letrozole (Ans. 5-6).
FF 2. Examiner finds that Bowman suggests the following synthetic
protocol leading to the production of letrozole:

(Ans. 5.)

3 Bowman et al., US 4,978,672, issued December 18, 1990.
4 Jun Wang, et al., Synthesis, characterization and single crystal structure of
4,4’-(1H-1,2,4 triazol-1-methylene)bisbenzonitrile, 24(5) Youji Huaxue 550-
553 (2004) (CASREACT Accession No. 141:314255).
5 Lang, US 5,073,574, issued December 17, 1991.
Appeal 2011-004417
Application 11/555,951
3
N
N
N
N
N
N
4-[alpha-(4-cyanophenyl)-(2-tetrazolyl)methyl]-benzonitrile
FF 3. Wang suggests the following synthetic protocol leading to the
production of letrozole:

(Ans. 6.)
FF 4. Examiner finds that the combination of Bowman and Wang fails to
suggest “the preparation of an ester” as is required by Appellants’ claim 1
(id.).
FF 5. Examiner finds that while the combination of Bowman and Wang
suggests the use of “halogens as leaving groups” in the synthesis of
letrozole, the combination fails to suggest a tosylate leaving group (id.).
FF 6. Examiner finds that Lang suggests the use of “sulfonate esters as
leaving groups in place of halogens” and “specifically points to the instant
type of leaving group . . . (arylsulfonyloxy)” (id.).
FF 7. Examiner directs attention to Lang’s example 7 finding that
“Example 7 and letrozole has the same utility” (Ans. 7).
FF 8. Lang’s example 7 is directed to the production of:

(Lang, col. 19, ll. 16-19.)
Appeal 2011-004417
Application 11/555,951
4
ANALYSIS
Appellants’ claim 1 is directed to a process for preparing an ester,
wherein the process comprises the following reaction:

+

Examiner admits that the combination of Bowman and Wang fails to
suggest the “the preparation of an ester” as is required by Appellants’ claim
1 (see FF 4). In addition, Examiner fails to provide an evidentiary basis on
this record to support a conclusion that Lang makes up for the deficiency in
the combination of Bowman and Wang (see Reply Br. 7 (Lang “does not
disclose reacting 4-[α-(4-cyanophenyl)-hydroxymethyl]-benzonitrile with p-
toluenesulfonyl chloride to form an ester, as required by the instant claims”);
App. Br. 12; Cf. FF 8). Examiner further fails to identify an evidentiary
basis on this record to support a conclusion that “[t]he term arylsulfonyloxy
would have lead [sic] a person of ordinary skill directly to a tosylate since
the corresponding sulfonyl chloride is the most widely available and
cheapest arylsulfonyl chloride sold on the market” (Ans. 6-7).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). For the
foregoing reasons, Examiner’s conclusion that “[t]he optimization of a
synthetic procedure by the combination [of] known synthetic
techniques/approaches is routine in synthetic organic chemistry and would
have been readily attainable by a person having ordinary skill in the art at
Appeal 2011-004417
Application 11/555,951
5
the time the invention was made” fails to make up for the evidentiary void in
the rejection of record (see Ans. 8).
Having failed to establish an evidentiary basis to support a conclusion
that the combination of Bowman, Wang, and Lang suggests the process set
forth in Appellants’ claim 1, we are compelled to agree with Appellants’
contention that “there is no reasoning in the record of this application
establishing that one having skill in the art would be led to make an ester of
4,4’-(hydroxymethylene)bis benzonitrile with p-toluenesulfonyl chloride, as
an intermediate in the synthesis of letrozole” (App. Br. 13; Reply Br. 7-8).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. The rejection of claims 1-6 and 20-25 under 35
U.S.C. § 103(a) as unpatentable over the combination of Bowman, Wang,
and Lang is reversed.

REVERSED

clj