Ex Parte Pandey et al

Board of Patent Appeals and Interferences

Nov 30, 2010

11431275 (B.P.A.I. Nov. 30, 2010)

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.
11/431,275 05/10/2006 Ravindra K. Pandey RPP158DUS 7484
49003 7590 11/30/2010
MICHAEL L. DUNN
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
WILLIAMSVILLE, NY 14221
EXAMINER
JONES, DAMERON LEVEST
ART UNIT PAPER NUMBER
1618
MAIL DATE DELIVERY MODE
11/30/2010 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 RAVINDRA K. PANDEY, ZACHARY GROSSMAN,
PETER KANTER, and THOMAS J. DOUGHERTY
__________

Appeal 2010-007728
Application 11/431,275
Technology Center 1600
__________

Before ERIC GRIMES, LORA M. GREEN, and FRANCISCO C. PRATS,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL1
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claim 48. We have jurisdiction under 35 U.S.C.
§ 6(b).

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.
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STATEMENT OF THE CASE
Claim 48 is the only claim on appeal, and reads as follows:
48. A composition comprising a chemical combination of a photodynamic
tetrapyrrolic compound having a porphyrin or chlorin structure having four
pendant groups attached to at least one pyrolle ring, said compound being
provided with a plurality of radionuclide element atoms connected to a
plurality of functional groups that will complex or combine with an MR
imaging enhancing element wherein each such functional group contains at
least one -DTPA moiety.

The following ground of rejection is before us for review:
Claim 48 stands rejected under 35 U.S.C. § 103(a) as being rendered
obvious by Collins.2
We affirm.
ISSUE
Has the Examiner established by a preponderance of the evidence that
Collins renders the composition of claim 48 obvious?

FINDINGS OF FACT
FF1 The Specification teaches that “[a]n objective of the invention was to
use . . . photosensitizers as a vehicle for delivering the desired conjugate
(mono-chelated or poly-chelated with Gd [gadolinium] or other
radionuclides) to tumor which may optionally be followed with treatment of
the tumor with light to obtain tumor necrosis.” (Spec. 13.)
FF2 The Specification teaches further that “[c]ertain porphyrins and
related tetrapyrrolic compounds tend to localize in malignant tumors and

2 Collins, US 6,838,073 B1, issued Jan. 4, 2005.
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other hyperproliferative tissue, such as hyperproliferative blood vessels, at
much higher concentrations than in normal tissues, so they are useful as a
tool for the treatment of various type of cancers and other hyperproliferative
tissue by photodynamic therapy (PDT).” (Id. at 5.)
FF3 According to the Specification:
[P]orphyrin based photosensitizers, such as HPPH, when
conjugated with an MR image enhancing compound [such as
lanthanide metals, e.g., Gd], can simultaneously operate as both
tumor-avid magnetic resonance imaging (MRI) agents and as
photosensitizers for photodynamic therapy thus permitting a
tumor to [be] precisely located and then treated by
photodynamic therapy using the same compound.

(Id. at 10.)
FF4 The Specification also teaches:
Compounds of the invention usually have the formula:

where R1, R2, R2a, R3, R3a, R4, R5, R5a, R6, R7, R7a, and R8
cumulatively contain at least two functional groups that will
complex or combine with an MR imaging enhancing element or
ion . . . .

(Id. at 11.)
FF5 The Examiner’s statement of the rejection may be found at pages 3-4
of the Answer.
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FF6 Specifically, the Examiner finds that Collins teaches cobalamin
conjugates that are useful as imaging and therapeutic agents, wherein more
than one chelating group, i.e., DTPA, is present. (Ans. 3.)
FF7 The Examiner also finds that Collins discloses that one or more
radionuclides may be present, and that possible radionuclides include
technetium-99m, indium-111, and gadolinium-153. (Id. at 4.)
FF8 Collins teaches novel cobalamin conjugates, that is, conjugates of
vitamin B12, and a residue of a peptide or amino acid comprising a
radionuclide. (Collins, col. 1, l. 66-col. 2, l. 2.)
FF9 Collins specifically teaches compounds of Formula I, reproduced
below.

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(Collins, Fig. 1.)
FF10 Banerjee,3 quoted by Appellants in the Reply Brief, teaches:
Light-Triggered Drug Activation The π-π* electronic
transition of the corrin ring of cobalamin produces a long-
wavelength absorption maximum at 525 nm. Irradiation of
alkylcobalamins at this wavelength leads to cleavage of the Co-
C bond with a photolysis quantum yield of 0.1-0.3. The ability
to use green light in the range of 500-590 nm to activate a
cobalamin prodrug under tissue culture conditions has been
demonstrated. However, human tissue becomes translucent to
red light only in the range of 600-750 nm, wherein minimal
light is absorbed and the intensity is diminished solely by
scattering. Therapeutic applications that demand deep
penetration of light would require the use of a red-shifted
cobalamin analogue to enhance tissue penetration. At least one
analogue with extended conjugation in the corrin ring has been
described.

(Reply Br. 3 (references omitted).)

PRINCIPLES OF LAW
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.

3 Ruma Banerjee, Light-Triggered Drug Activation, Chemistry and
Biochemistry of B12, §5.4.6, John Wiley and Sons © (1999).
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In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). However, the claims
are not to be confined to the embodiments found in the Specification, and it
is improper to import limitations from the Specification into the claims. In
re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007).
The Supreme Court has emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l v. Teleflex Inc., 550 U.S. 398. 418 (2007). “If a person of ordinary skill
can implement a predictable variation, § 103 likely bars its patentability.”
(Id.)

ANALYSIS
Appellants argue that cobalamin, as taught by Collins, is not a
photodynamic compound. (App. Br. 15.) Specifically, Appellants assert
that the Examiner appears to be assuming that all porphyrins and chlorins
are photodynamic, which Appellants assert is an incorrect assumption.
(Reply Br. 2.) Appellants cite Banerjee, asserting that it clearly states that
“cobalamin is in fact not photodynamic within the meaning of the present
invention.” (Id.)
Appellants argue further that the ordinary artisan “knows that the
corrins, e.g. cobalamin, are not photodynamic within the meaning of the
present invention permitting photodynamic therapy.” (Id. at 3.) According
to Appellants, “[c]orrin structures have all of the a, b, c, and d rings
saturated; whereas, photodynamic porphyrin type structures require
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unsaturation at least at the a ring.” (Id. (see, e.g., FF4).) Appellants assert
that in contrast, the D ring in the structure of Collins is saturated, which
results in different photodynamic properties. (Reply Br. 3.)
We start with claim interpretation. Claim 48 is drawn to a
“photodynamic tetrapyrrolic compound having a porphyrin or chlorin
structure having four pendant groups attached to at least one pyrolle ring.”
Appellants do not argue that the compound of Collins is not a “tetrapyrrolic
compound having a porphyrin or chlorin structure having four pendant
groups attached to at least one pyrolle ring,” but only that the compound of
Collins in not “photodynamic” within the meaning of the Specification.
We first note that Appellants do not point to, nor can we find, a
specific definition for “photodynamic” in the Specification. We note that
Appellants point to a specific compound disclosed in the Specification
(FF4), but according to the Specification, “[c]ompounds of the invention
usually have the formula,” and thus the disclosed formula is exemplary, and
not limiting. Nor have Appellants pointed to where in the Specification it is
disclosed that photodynamic porphyrin type structures require unsaturation
at least at the a ring.
Banerjee, cited by Appellants, teaches that cobalamin compounds,
such as that taught by Collins, are able to use green light, and that green light
has been used to activate a cobalamin prodrug under tissue culture
conditions. (See FF10.) Thus, cobalamin compounds are “photodynamic”
in that they may be activated using green light.
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Turning to Appellants’ arguments, we do not find them convincing as
they are relying on a narrower definition of “photodynamic” that is not
supported by the Specification.

CONCLUSION OF LAW
We conclude that the Examiner has established by a preponderance of
the evidence that Collins renders the composition of claim 48 obvious. We
thus affirm the rejection of claim 48 under 35 U.S.C. § 103(a) as being
rendered obvious by Collins.

TIME PERIOD FOR RESPONSE
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

alw

MICHAEL L. DUNN
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
WILLIAMSVILLE, NY 14221