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Patent Trials and Appeals Board

Oct 18, 2019

15506017 - (D) (P.T.A.B. Oct. 18, 2019)

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.
15/506,017 02/23/2017 Gary G. Deng X20396 4924
25885 7590 10/18/2019
ELI LILLY & COMPANY
PATENT DIVISION
P.O. BOX 6288
INDIANAPOLIS, IN 46206-6288
EXAMINER
COUGHLIN, MATTHEW P
ART UNIT PAPER NUMBER
1626
NOTIFICATION DATE DELIVERY MODE
10/18/2019 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):
patents@lilly.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte GARY G. DENG, DANWEN HUANG,
CYNTHIA DARSHINI JESUDASON, and JOSHUA O. ODINGO1
Appeal 2019-004604
Application 15/506,017
Technology Center 1600
BEFORE DONALD E. ADAMS, ERIC B. GRIMES, and RYAN H. FLAX,
Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
chemical compounds, which have been rejected based on 35 U.S.C. § 112(d)
and obviousness-type double patenting. We have jurisdiction under 35
U.S.C. § 6(b). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM the rejection based 35 U.S.C. § 112(d) but REVERSE
the rejections for double patenting. Thus, we AFFIRM-IN-PART.

1 Appellant identifies the real party in interest as Eli Lilly and Company.
Appeal Br. 1. We use the word Appellant to refer to “applicant” as defined
in 37 C.F.R. § 1.42(a).
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STATEMENT OF THE CASE
The Specification discloses “compounds which are inhibitors of PDE4
[phosphodiesterase 4] and as such, are useful in treatment of overactive
bladder.” Spec. 1:28–29.
Claims 1–3, 5, and 7–10 are on appeal.2 Claim 1 is illustrative and
reads as follows:
1. A compound of the formula

wherein
R is

R1 is CH3, CD3, CN, Cl or CF3;
provided when R1 is CH3 or CD3 it is not attached at the
5 position;
or a pharmaceutically acceptable salt thereof.

The claims stand rejected as follows:
Claim 5 under 35 U.S.C. § 112(d) as being in improper dependent
form (Ans. 3);

2 Claims 4 and 6 are also pending but are not subject to any outstanding
rejection.
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Claims 1–3, 5, and 7–10 on the basis of nonstatutory obviousness-type
double patenting based on claims 1−6 of U.S. Patent 9,034,864 (“’864
Patent”), by itself or combined with Hood3 (Ans. 5);
Claims 1–3, 5, and 7–10 on the basis of nonstatutory obviousness-type
double patenting based on claims 1−4 of U.S. Patent 9,266,859 (“’859
Patent”) (Ans. 10); and
Claims 1–3, 5, and 7–10 on the basis of nonstatutory obviousness-type
double patenting based on claims 3 and 4 of U.S. Patent 9,604,967 (“’967
Patent”), by itself or combined with Hood (Ans. 15).
OPINION
Improper Dependent Form
The Examiner has rejected claim 5 under 35 U.S.C. § 112(d) “as
being of improper dependent form” because “[t]he last option in claim 5
provides for a -CD3 group at the 5-position of a pyridyl ring, which is
excluded from claim 1 by provision.” Ans. 3.
Appellant did not dispute the merits of this rejection in the Appeal
Brief. With the Reply Brief, Appellant filed an amendment “to specifically
address said rejection.” Reply Br. 6.
However, amendments filed after the appeal brief may only be
admitted “to cancel claims, where such cancellation does not affect the
scope of any other pending claim in the proceeding, or . . . [t]o rewrite
dependent claims into independent form.” 37 C.F.R. § 41.33(b). “All other

3 Hood et al., Common theme for drugs effective in overactive bladder
treatment: Inhibition of afferent signaling from the bladder, International
Journal of Urology 20:21–27 (2013).
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amendments filed after the date of filing an appeal . . . will not be admitted
except as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i), and 41.50(b)(1),” none
of which apply here. 37 C.F.R. § 41.33(c).
We therefore affirm the rejection of claim 5 under 35 U.S.C. § 112(d).
Obviousness-type Double Patenting
The Examiner has rejected claims 1–3, 5, and 7–10 for obviousness-
type double patenting, based on: (1) the ’864 Patent, by itself or combined
with Hood; (2) the ’859 Patent; and (3) the ’967 Patent, by itself or
combined with Hood. Ans. 5, 10, 15. The Examiner’s reasoning is
substantively the same for each of the rejections, and Appellant relies on the
same arguments with respect to all of the rejections, so we will address them
together.
We will focus on the rejection based on the ’864 Patent. Hood is cited
only with respect to claim 10 (which requires combining the claimed
compound with tadalafil), and therefore is not relevant to the dispositive
issue.
The Examiner finds that the ’864 Patent claims two compounds, of the
following formula:

wherein R is hydrogen or methyl. Ans. 5 (citing ’864 Patent, claim 2). The
Examiner finds that the rejected claims of the instant application encompass
the following compounds:
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Id. at 6. The Examiner finds that these compounds “differ from the patented
compound where R is H based on the point of attachment on the pyridine
ring.” Id. at 7.
The Examiner also finds that the rejected claims of the instant
application encompass the following compounds:

Id. The Examiner finds that these compounds “differ from the patented
compound where R is CH3 based on the location of methyl substitution on
the pyridine ring.” Id.
The Examiner concludes that “[t]he instant claims encompass obvious
variations of the patented compounds (and by extension the same
compositions and methods thereof).” Id. at 6. The Examiner reasons that
[i]t is well established that position isomers are prima facie
structurally obvious even in the absence of a teaching to
modify. The isomer is expected to be preparable by the same
method and to have generally the same properties. This
expectation is then deemed the motivation for preparing the
position isomers.
Id. at 7.
The Examiner also reasons that the latter two compounds reproduced
above (with H3C- substituents on the left side) “could similarly be said . . .
[to be] homologs of the patented compound with R is H” because “[t]he
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compounds above differ from the patented compound based on the
replacement of hydrogen with methyl.” Id. at 8.
The Examiner finds that a skilled artisan “would expect that the
compounds could be prepared by the same method as taught by the patent
and have the same utility as the compounds taught by the patent.” Id. at 9.
“[T]he replacement of hydrogen for an alkyl group falls under the well-
established doctrine of homology, which assumes that homologous
compounds are likely to have similar properties.” Id. at 10.
Appellant argues that the “claims cited in the rejections are . . . limited
to wherein R is only hydrogen or methyl, and further to wherein R is only
limited to the five position of the pyridinyl group, which is only attached to
the backbone at the two position.” Appeal Br. 10. Appellant argues that “the
Examiner has not provided a reasoned explanation, based on any teaching of
the prior art for these particular compounds, to establish that a skilled artisan
would have been lead [sic] to start from the cited claims . . . and then arrive
at the presently claimed compounds, with a reasonable expectation of
success.” Id. at 11.
Appellant disagrees that “general propositions such as homologs or
positional isomers are legally sufficient to establish obviousness.” Id.
“Applicants specifically reject the allegation that positional isomers are
prima facie obvious based only on general assumptions,” and “the rejection
does not provide a reasoned basis for this conclusory finding.” Id. at 12,
citing Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350
(Fed. Cir. 2007).
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Appellant argues that the rejection is based on the “type of misreading
and misapplication of the recited cases [that] was clearly addressed in In re
Grabiak, 769 F2d 729 (Fed. Cir. 1985),” which stated that “generalization
should be avoided insofar as specific chemical structures are alleged to be
prima facie obvious one from the other.” Reply Br. 12. Appellant argues that
“[t]he Office’s assertion that ‘that ring-walking a methyl group or replacing
hydrogen with methyl’ would be predictable is exactly the type of
generalization forbidden by Grabiak,” id. at 13, and “[t]he Office has
provided no prior art reference which provides the motivation to make such
modifications to the two compounds of claim 2 in U.S. Patent No.
9,034,864.” Id. at 15.
We agree with Appellant that the double patenting rejections are not
supported by a preponderance of the evidence. Specifically, the cited
evidence does not adequately show that, at the time the instant application
was filed, a person of ordinary skill in the art would have had a reason to
modify the claimed compounds in the specific manner required to produce
the instantly claimed compounds, with a reasonable expectation that the new
compounds would retain the activity of inhibiting PDE4.
The Examiner cites several cases for the proposition that “position
isomers are prima facie structurally obvious even in the absence of a
teaching to modify.” Ans. 7. Similarly, the Examiner cites cases for the
proposition that replacing a hydrogen on a known compound with a methyl
group is obvious because “the replacement of hydrogen [with] an alkyl
group falls under the well-established doctrine of homology, which assumes
that homologous compounds are likely to have similar properties.” Id. at 10.
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The Examiner’s position, however, is not supported by precedent. As
Appellant pointed out, the Grabiak court cautioned that “generalization
should be avoided insofar as specific chemical structures are alleged to be
prima facie obvious one from the other.” 769 F.2d at 731. In that case, the
court held that “there must be adequate support in the prior art for the
ester/thioester change in structure, in order to complete the PTO’s prima
facie case.” Id. at 731–32. “The PTO cited no pertinent reference showing or
suggesting to one of ordinary skill in the art the change of a thioester for an
ester group,” and the court reversed the rejection. Id. at 732.
The court has characterized Grabiak as holding that, “[i]n addition to
structural similarity between the compounds, a prima facie case of
obviousness also requires a showing of ‘adequate support in the prior art’ for
the change in structure.” Takeda, 492 F.3d at 1356. The Takeda court noted
that In re Deuel, 51 F.3d 1552 (Fed. Cir. 1995), stated that a known
compound may suggest its homolog or isomer because such compounds
often have similar properties. 492 F.3d at 1356. The court noted that Deuel
“clarified, however, that in order to find a prima facie case of unpatentability
in such instances, a showing that the ‘prior art would have suggested making
the specific molecular modifications necessary to achieve the claimed
invention’ was also required.” Id.
Thus, the instantly claimed compounds cannot be rejected as obvious
variants of the patented compounds based on structural similarity by itself.
That conclusion also requires a showing that, based on what was known at
the time, a skilled artisan would have had a reason to make the specific
molecular modifications required; i.e., to attach a methyl group at the 4 or 6
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position of the pyridine ring (rather than at the 5 position), or to attach the
(unsubstituted) pyridine ring at a carbon other than the 2 position.
The Examiner points out that the patented claims encompass “two
compounds that differ by the presence [or] absence of a methyl group on a
pyridine ring (for the variable R),” both of which “have similar utility.” Ans.
23. That is, the R group can be either hydrogen or methyl in the patented
compounds, and both compounds inhibit PDE4. The Examiner concludes
that “[i]f the claims of the patent demonstrate anything it is that hydrogen/
methyl variation on the pyridine ring is tolerated.” Id.
As Appellant has pointed out, however, “this is the only structural
change taught in U.S. Patent No. 9,034,864, and this change occurs only in
the para position [i.e., position 5]. No other substitutions on this ring are
taught in U.S. Patent No. 9,034,864.” Reply Br. 11.
We agree with Appellant that the two patented compounds, which
differ only by having either hydrogen or methyl at position 5 of the pyridine
ring, do not provide an adequate basis for the rejections. That is, the two
compounds might support a conclusion that limited variation at the 5 position
of the pyridine ring is unlikely to affect PDE4 inhibitor activity. They do not,
however, show the effect of any variations at different positions of the
pyridine ring, or the effect of varying the point of attachment of the pyridine
ring to the rest of the molecule.
Thus, the evidence relied on in support of the rejections does not
adequately show that—without the later disclosure that certain structurally
related compounds also inhibit PDE4—a skilled artisan would have had a
reason to make the specific molecular modifications to the patented
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compounds that are required by the claims on appeal, with a reasonable
expectation that they would have similar activity. We therefore reverse all of
the rejections for obviousness-type double patenting.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
5 112(d) Improper Dependent
Form
5
1–3, 5, 7–10 Obviousness-type
Double Patenting; ’864
Patent, Hood
1–3, 5, 7–
10
1–3, 5, 7–10 Obviousness-type
Double Patenting, ’859
Patent
1–3, 5, 7–
10
1–3, 5, 7–10 Obviousness-type
Double Patenting, ’967
Patent, Hood
1–3, 5, 7–
10
Overall
Outcome
5 1–3, 7–10
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART