Ex parte Picard et al.

Board of Patent Appeals and Interferences

Oct 30, 1998

08085657 (B.P.A.I. Oct. 30, 1998)

Application for patent filed July 1, 1993. According to the1
appellants this application is a continuation of Application 07/776,112, filed
October 15, 1991, now U.S. Patent No. 5,254,599, issued October 19, 1993.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOSEPH A. PICARD, WILLIAM H. ROARK
and BRUCE D. ROTH
__________
Appeal No. 95-2879
Application 08/085,6571
__________
ON BRIEF
__________
Before METZ, ELLIS and OWENS, Administrative Patent Judges.
ELLIS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of 1, 2, 5 through 8, 10 and 11,
the only claims remaining in the application. Claims 3, 4, 9
and 12 have been canceled.
Appeal No. 95-2879
Application 08/085,657
2
As a preliminary matter, we note the appellants’
statement on page 2 of the main Brief, that the claims stand
or fall with claim 1. 37 CFR § 1.192(c)(5)(1994); now 37 CFR
§ 1.192(c)(7). Accordingly, for purposes of this appeal, we
will consider the issues as they apply to representative claim
1. Claim 1 reads
as follows:
1. A compound of the formula
0 0
2 2
Ar-X-CN-S-R2
# 2
R 01
wherein X is -NH-;
wherein Ar is
(a) phenyl which is substituted by
2, 6 -bis(methylethyl),
2, 4, 6 -trimethoxy, or from one to three substitutes
selected from:
hydroxy,
nitro,
Appeal No. 95-2879
Application 08/085,657
3
-COOH,
-COOalkyl wherein alkyl has from 1 to 4 carbon atoms and
which is straight or branched, and
-(CH ) NR R wherein m is zero or one, and each R and R is 2 m 3 4 3 4
hydrogen or a straight or branched alkyl group having 1 to
4 carbon atoms; or
(b) 1- or 2-naphthyl which is unsubstituted or substituted
with one to three substituents selected from:
alkyl having from 1 to 4 carbon atoms and which is straight or
branched,
alkoxy having from 1 to 3 carbon atoms and which is straight
or branched,
hydroxy,
fluorine,
chlorine,
bromine,
nitro,
cyano,
trifuoromethyl,
-COOH,
-COOalkyl wherein alkyl has from 1 to 4 carbon atoms and is
straight or branched,
-(CH ) NR R wherein m, R , and R have the meanings defined2 m 3 4 3 4
above;
Appeal No. 95-2879
Application 08/085,657
4
wherein R is hydrogen, lower alkyl having from 1 to 4 carbon 1
atoms or benzyl;
wherein R is2
R5
#
-C-R7
#
R6
wherein each of R and R is hydrogen, methyl or ethyl or R5 6 5
and R together with the carbon atom to which they are6
attached form
a cyclic group having from 3 to 8 carbon atoms; and R is a7
straight or branched alkyl group having from 4 to 16 carbon
atoms; and pharmaceutically acceptable salts thereof.
The references relied on by the examiner are:
Great Britain (GB `885) 815,885 July 1, 1959
Aumüller et al. (Aumüller)
(German Auslegeschrift) 1,075,588 Feb. 18, 1960
McLamore et al. (McLamore) 3,013,072 Dec. 12, 1961
Appeal No. 95-2879
Application 08/085,657
5
DANISH Patent
(Denmark)(DN `622) 93,622 Sep. 10, 1962
A reference relied on by this merits panel is:
Picard et al. (Picard) 5,254,589 Oct. 19, 1993
Claims 1, 2, 5 through 8, 10 and 11 stand rejected under
35 U.S.C. § 103 as being unpatentable over GB ‘885, DN ‘622
and McLamore. We reverse.
Discussion
The claimed invention is directed to novel sulfonyl ureas
which are said to be useful for lowering blood cholesterol.
Specification, p. 1, para. 1. According to the specification,
the claimed compounds “inhibit acyl-CoA:cholesterol acyltrans-
ferase (ACAT), the enzyme responsible for the esterification
of cholesterol.” Id.
The examiner has predicated his conclusion of obviousness
on the teachings of GB ‘885, DN ‘622 and McLamore. According
to the
examiner, GB ‘885 teaches sulfonyl urea compounds which are
Appeal No. 95-2879
Application 08/085,657
6
structurally similar to the compound described in
representative claim 1. Answer, p. 4, para. 2. The examiner
states that DN ‘622 and McLamore “show the equivalence of
alkyl and phenyl group for the structurally similar
compounds.” Id., para. 3. The examiner notes that compounds
of GB ‘885 and DN ‘622 are useful for lowering blood sugar
levels. Id., para. 2 and 3. The examiner concludes that
[i]t would have been prima facie obvious to
one of ordinary skill in the art at the time the
invention was made to modify ‘885 by introducing
phenyl or substituted phenyl group for the alkyl
group as taught by NR 93622 [DN ‘622] and
McLamore because the secondary references
clearly teach the equivalence of alkyl and aryl
groups in the structurally similar compounds,
with the reasonable expectation of achieving a
successful antidiabetic composition, absent
evidence to the contrary [Answer, p. 5, para.
1].
We find this position untenable.
It cannot be gainsaid that the examiner has the burden
under § 103 to establish a prima facie case of obviousness.
In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1595, 1598-
1600 (Fed. Cir.
1988); In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785,
Appeal No. 95-2879
Application 08/085,657
7
787-88 (Fed. Cir. 1984). To that end, the examiner must show
that some objective teaching or suggestion in the applied
prior art, or knowledge generally available in the art, would
have led those of ordinary skill to combine the teachings of
the references to arrive at the claimed invention. Pro-Mold
and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629 (Fed. Cir. 1996); In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992); In re Fine,
supra; Ashland Oil, Inc. v. Delta Resins & Refractories Inc.,
776 F.2d 281, 297 n. 24, 227 USPQ 657, 67 n. 24 (Fed. Cir.
1985). It is impermis-sible for the examiner to use the
applicant's specification as an instruction manual or template
to piece together the teachings
of the prior art. In re Dow Chemical Co., 837 F.2d 469, 473,
5 USPQ2d 1529, 1531 (Fed. Cir. 1988).
Contrary to the examiner’s argument, we do not find any
teachings in the McLamore reference as to the equivalence of
alkyl and phenyl groups, or alkyl and aryl groups. Nor do we
find these groups to be adjacent homologs, in the traditional
sense of the word, or to be structurally similar. In fact,
Appeal No. 95-2879
Application 08/085,657
We note the appellants’ arguments throughout the main Brief and Reply2
Brief that the instant compounds are for reducing cholesterol and, not for
reducing blood sugar. We find such arguments to be misguided. It is well
established that the motivation to combine references does not have to be
identical to that of the patent applicant in order to establish a prima facie
case of obviousness. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311
(Fed. Cir. 1996).
8
the issue of homologs and structural similarity between the
referenced groups has not been raised by the examiner.
Rather,
on this record, we find only assertions and allegations by the
examiner that the McLamore reference suggests that alkyl and
phenyl (substituted or unsubstituted) groups are equivalent.
See, e.g., Answer, sentence bridging pp. 6-7. The examiner
has not pointed to any teachings within the patent which
support his position or provide any explanation as to why
these groups are so similar that it would have been obvious to
those of ordinary skill in the art to substitute one for the
other in order to arrive at the claimed invention. In
addition, we find that the examiner has overlooked the fact
that the references must also suggest that the combination of
a substituted phenyl and an aliphatic group will result in the
compound which is capable of lowering blood sugar levels. 2
Appeal No. 95-2879
Application 08/085,657
9
That is, the combined teachings of the references must suggest
that a sulfonyl urea which comprises both a substituted phenyl
(attached to the -NH) and an aromatic (attached to the SO )2
would possess the referenced biological property. We find the
suggestion for a compound having the claimed limitations only
in the appellants’ disclosure. Accordingly, we agree with the
appellants, that the examiner has relied on impermissible
hindsight in making his determination of
obviousness. In re Fritch, supra; Interconnect Planning Corp.
v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547 (Fed. Cir.
1985) (“It is impermissible to engage in hindsight
reconstruction of the claimed invention, using the applicant’s
structure as a template and selecting elements from references
to fill the
gaps”). W.L. Gore, 721 F.2d 1540, 1553, 220 USPQ 303, 312-313
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)(“To imbue
one of ordinary skill in the art with knowledge of the
invention in suit, when no prior art reference or references
of record convey or suggest that knowledge, is to fall victim
to the insidious effect of a hindsight syndrome wherein that
Appeal No. 95-2879
Application 08/085,657
10
which only the inventor taught is used against its teacher”).
Since, on this record, the examiner has not provided factual
evidence to support his position, we reverse the rejection. A
conclusion of obviousness must be based on evidence, not
unsupported arguments. In re Freed, 425 F.2d 785, 788, 165
USPQ 570, 572 (CCPA 1970);
In re Warner, 379 F.2d 1011, 1014-17, 154 USPQ 173, 176-78
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
Accordingly, the rejection is reversed.
New Ground of Rejection
Under the provisions of 37 CFR § 1.196(b), we make the
following new ground of rejection.
Claims 1, 2, 5 through 8, 10 and 11 are rejected under
the judicially-created doctrine of obviousness-type double
patenting as being unpatentable over claims 1 through 3 of
U.S. Patent 5,254,589 (Picard). Although the conflicting
claims are not identical, they are not patentably distinct
from each other because the present compound would have been
obvious to one of ordinary skill in the art over the method of
Appeal No. 95-2879
Application 08/085,657
11
using the same as a pharmaceutical for treating
artherosclerosis.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides, “A new ground of rejection shall
not be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 95-2879
Application 08/085,657
12
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
REVERSED; 37 CFR § 1.196(b)

ANDREW H. METZ )
Administrative Patent Judge )
)
)
)
JOAN ELLIS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )

JE/cam
Appeal No. 95-2879
Application 08/085,657
13
Charles W. Ashbrook
Patent Department
WARNER-LAMBERT Company
2800 Plymouth Road
Ann Arbor, MI 48105