Patrick L. Mcgeer et al.

Patent Trials and Appeals Board

Jul 25, 2019

14537611 - (D) (P.T.A.B. Jul. 25, 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.
14/537,611 11/10/2014 Patrick L. McGeer A637 0009/DHT 4719
720 7590 07/25/2019
OYEN, WIGGS, GREEN & MUTALA LLP
480 - THE STATION
601 WEST CORDOVA STREET
VANCOUVER, BRITISH COLUMBIA V6B 1G1
CANADA
EXAMINER
MCMILLIAN, KARA RENITA
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
07/25/2019 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
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PATRICK L. MCGEER and MOONHEE LEE
____________

Appeal 2018-006120
Application 14/537,6111
Technology Center 1600
____________

Before JEFFREY N. FREDMAN, TAWEN CHANG, and DAVID COTTA,
Administrative Patent Judges.

COTTA, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims to a method
of treating age related macular degeneration. The Examiner rejected the
claims on appeal as obvious under 35 U.S.C. § 103(a).
We reverse.

1 According to Appellants, the real party in interest is Aurin Biotech Inc.
App. Br. 1.

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STATEMENT OF THE CASE
The Specification states “this invention relates to treatment of age-
related macular degeneration.” Spec. ¶ 2.
Claims 1–9 are on appeal. Claim 1 is illustrative and reads as follows:
1. A method of treating age-related macular degeneration,
the method comprising administering orally or parenterally an
effective amount of aurin tricarboxylic acid, aurin
quadracarboxylic acid, and/or aurin hexacarboxylic acid,
wherein the method excludes administration of components of
aurin tricarboxylic acid complex of greater than or equal to 1
kilodalton in molecular weight.
App. Br. 12.
The Examiner rejected claims 1–9 rejected under 35 U.S.C. § 103(a)
as obvious over the combination of Bernstein,2 Wang,3 and Fung.4
OBVIOUSNESS
Claim 1 recites a method for treating age-related macular
degeneration by administering aurin tricarboxylic acid, aurin
quadracarboxylic acid, and/or aurin hexacarboxylic acid. The Specification
expressly defines aurin tricarboxylic acid to be a compound having a
molecular weight of 422 kDa, aurin quadracarboxylic acid to be a compound
having a molecular weight of 572 kDa, and aurin quafracarboxylic acid to be
a compound having a molecular weight of 858 kDa. Spec. ¶ 15.

2 Bernstein et al., US Patent No. 4,007,270, issued Feb. 8, 1977
(“Bernstein”).
3 Wang et al., Isolation and Structure Elucidation of Low Molecular Weight
Components of Aurintricarboxylic Acid (ATA), 57 J. Org. Chem. 3861–3866
(1992) (“Wang”).
4 Fung et al., US Patent Publication No. 2009/0214538 A1, published Aug.
27, 2009 (“Fung”).
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The express definition of aurin tricarboxylic acid (“ATA”) provided
by Appellants differs from how the term “aurin tricarboxylic acid” was used
in the art. For example, Wang discloses “ATA is actually a heterogeneous
mixture of polymers.” Wang, 3862. Similarly, Gonzalez5 discloses that
“aurintricarboxylic acid is a mixture of polymers of the phenol-
formaldehyde type.” Gonzalez, 535. This is consistent with the teaching in
the Specification that aurin tricarboxylic acid having a molecular weight of
422 kDa, aurin quadracarboxylic acid having a molecular weight of 572
kDa, and aurin quadracarboxylic acid having a molecular weight of 858
kDa, were obtained by separating “commercially purchased ‘aurin
tricarboxylic acid’ from Sigma-Aldrich, or from Aluminon . . . into high and
low molecular weight components.” Spec. ¶ 15.
In finding the claimed method obvious, the Examiner found that Fung
disclosed the use of complement inhibitors for the treatment of ocular
conditions including age-related macular degeneration. Ans. 8. The
Examiner found that Bernstein disclosed “inhibiting complement with a
heterogeneous mixture of polymers that include aurin tricarboxylic acid,
aurin quadracarboxylic acid and other components of the aurin tricarboxylic
acid complex of less than 1 kDa in molecular weight.” Id. at 6. The
Examiner concluded:
[I]t would have been obvious to a person of ordinary skill in the
art to combine the teachings of Bernstein et al. which teaches a

5 Gonzalez et al., Fractionation and Structural Elucidation of the Active
Components of Aurintricarboxylic Acid, a Potent Inhibitor of Protein
Nucleic Acid Interactions, 562 Biochimica et Biophysica Acta 534–545
(1979) (“Gonzalez”). Gonzalez was cited by Appellants as evidence that
commercially available “aurin tricarboxylic acid” is a mixture “dominated
by components over 1kDa in molecular weight.” App. Br. 8.
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method of inhibiting complement comprising the administration
of aurin tricarboxylic acid with the teachings of Fung et al. which
teaches a method of treating both the dry and wet forms of age-
related macular degeneration comprising the administration of
inhibitors of complement including inhibitors of the classical
complement pathway.
Id. at 16.
With respect to the requirement of claim 1 that the method “exclude[]
administration of components of aurin tricarboxylic acid complex of greater
than or equal to 1 kilodalton in molecular weight,” the Examiner concluded
that since commercially available aurin tricarboxylic acid was known to be
impure – i.e. was known to be a heterogeneous mixture of polymers – it
would have been obvious to “use procedures well-known in the art as taught
by Wang et al. to purify or fractionate the composition such that only ATA
which is the triphenylmethane dye is present resulting in the use of the ATA
component of less than 1 kDa for inhibiting complement.” Ans. 12. We are
not persuaded.
We acknowledge that it is often obvious to purify a composition
known to be impure. We further acknowledge that the prior art discloses an
impure composition known as “aurin tricarboxylic acid” that included the
low-molecular weight compounds recited in the claim – i.e., aurin
tricarboxylic acid, aurin quadracarboxylic acid, and aurin quadracarboxylic
acid. However, the Examiner does not identify in the cited art any teaching
that the claimed low-molecular-weight compounds are the compounds in the
heterogeneous mixture that have, or would have been expected to have,
complement inhibiting activity. Moreover, Gonzalez suggests that
compounds in the heterogeneous mixture having a high molecular weight
have greater potency than compounds having a lower molecular weight.
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Gonzalez, 535 (“Evidence will be presented that aurintricarboxylic acid is a
mixture of polymers of the phenol-formaldehyde type whose inhibitory
potency increases with the average molecular weight of the fraction.”); see
also, Wang, 3865 (“All of these low molecular weight components were
considerably less potent in preventing the cytopathic effect of HIV-1 than
unfractionated ATA. This is not surprising because prior investigations of
the anti-HIV activities of ATA fractions have shown that the antiviral
potency increases with the molecular weight of the ATA fraction.”) (internal
citations omitted). The current record thus does not support the Examiner’s
finding that it would have been obvious to purify the heterogeneous mixture
of polymers known in the art as ATA by excluding compounds having a
molecular weight greater than or equal to 1 kilodalton because the evidence
of record shows that purification would have been expected to remove active
compound, not concentrate it. Accordingly, we reverse the Examiner’s
rejection of claims 1–9.
SUMMARY
For the reasons set forth herein, we reverse the Examiner’s rejection
of claims 1–9 under 35 U.S.C § 103(a) as obvious over the combination of
Bernstein, Wang, and Fung.
REVERSED