11539013 (B.P.A.I. Sep. 22, 2010)

Ex Parte Singh et al

Board of Patent Appeals and InterferencesSep 22, 2010

11539013 (B.P.A.I. Sep. 22, 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. 11/539,013 10/05/2006 Rajinder Singh 09-570-US-CON-2 2973 84067 7590 09/23/2010 McDonnell Boehnen Hulbert & Berghoff LLP 300 South Wacker Drive Chicago, IL 60606 EXAMINER NWAONICHA, CHUKWUMA O ART UNIT PAPER NUMBER 1621 MAIL DATE DELIVERY MODE 09/23/2010 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 RAJINDER SINGH, ANKUSH ARGADE, DONALD PAYAN, SUSAN MOLINEAUX, SACHA J. HOLLAND, JEFFREY CLOUGH, HOLGER KEIM, SOMASEKHAR BHAMIDIPATI, CATHERINE SYLVAIN, HUI LI, and ALEXANDER B. ROSSI ____________ Appeal 2010-006360 Application 11/539,013 Technology Center 1600 ____________ Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and STEPHEN WALSH, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134 involves claim 56. 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. Appeal 2010-006360 Application 11/539,013 2 STATEMENT OF THE CASE The claim is directed to a compound of formula: or a salt or N-oxide thereof. Claim 56 stands rejected under the written description provision of 35 U.S.C. § 112, first paragraph. We reverse. ISSUE Does Appellants’ Specification provide written descriptive support for the claimed compound? FINDINGS OF FACT FF 1. The Examiner finds “no mention of Appellants’ claimed compound in the specification either by the chemical name . . . or in structure” (Ans. 5). FF 2. The Examiner finds “no mention of Appellants’ claimed compound during the various reaction processes performed by Appellants in the specification” (id.). FF 3. Appellants disclose that “[i]n one illustrative embodiment, the 2,4- pyrimidinediamine compounds of the invention are compounds according to structural formula (I): . . . wherein: L1 and L2 are each, independently of one another, selected from the group consisting of a direct bond and a linker” (Spec. 3: 21-26). Appeal 2010-006360 Application 11/539,013 3 FF 4. Appellants disclose that “[i]n still another specific embodiment, L1 and L2 are each a direct bond such that the 2,4-pyrimidinediamine compounds of the invention are compounds according to structural formula (Ia): ” (Spec. 28: 27 -30). FF 5. Appellants disclose that “[i]n one exemplary embodiment, the [2,4- pyrimidinediamine] compounds [of the invention] can be synthesized . . . as illustrated in Scheme (I)” (Spec. 26-27). FF 6. Appellants’ Scheme I is representative of the synthesis of compounds having Appellants’ structural formulae (I) and (Ia), and illustrates, inter alia, the following reaction: (Spec 44: Scheme I, compounds 4, 10, and 8). FF 7. Scheme I illustrates that compound 10 is represented by the formula R4-L2-NH2 (id.). FF 8. Appellants disclose that “[i]n a thirteenth embodiment of the compounds of the structural formulae (I) and (Ia), R2 and/or R4 is an optionally substituted heteraryl. . . . Specific examples of such optionally substituted heteraryls include . . . Appeal 2010-006360 Application 11/539,013 4 . . . wherein: . . . R35 is hydrogen . . . [and] X is selected from the group consisting of[, inter alia,] . . . N” (Spec. 34: 3-4; 34: 18-19; 36: last structure in column 3; and 36: 5-7). FF 9. The compound set forth in FF 8 is compound 10 when L2 is a direct bond (FF 3-4) and the resulting compound 10 is a description of the compound in Appellants’ claim 56. ANALYSIS Upon consideration of the evidence on this record including the Examiner’s and Appellants’ briefings we find that the weight of the evidence falls in favor of Appellants (FF 3-9; see also App. Br. 6: first full paragraph). CONCLUSION OF LAW Appellants’ Specification provides written descriptive support for the claimed compound. The rejection of claim 56 under the written description provision of 35 U.S.C. § 112, first paragraph is reversed. REVERSED cdc MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP 300 SOUTH WACKER DRIVE CHICAGO, IL 60606