2020005122 (P.T.A.B. Jul. 23, 2021)

Waters Technologies Corporation

Patent Trials and Appeals BoardJul 23, 2021

2020005122 (P.T.A.B. Jul. 23, 2021)

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. 15/005,619 01/25/2016 Darryl W. Brousmiche 8185.0071CP2 4565 160377 7590 07/23/2021 Kacvinsky Daisak Bluni PLLC (8185) 2601 Weston Parkway Suite 103 Cary, NC 27513 EXAMINER BERKELEY, EMILY R ART UNIT PAPER NUMBER 1797 NOTIFICATION DATE DELIVERY MODE 07/23/2021 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): docketing@kdbfirm.com ehysesani@kdbfirm.com mbotnaru@kdbfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DARRYL W. BROUSMICHE and MATTHEW A. LAUBER1 Appeal 2020-005122 Application 15/005,619 Technology Center 1700 Before ERIC B. GRIMES, LINDA M. GAUDETTE, and DEBRA L. DENNETT, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to a genus of chemical compounds, which have been rejected as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a new ground of rejection. STATEMENT OF THE CASE The Specification discloses “MS [mass spectrometry] active compounds useful in rapid fluorescence tagging of glycans such as N-linked 1 Appellant identifies the real party in interest as Waters Technologies Corporation. Appeal Br. 3. We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appeal 2020-005122 Application 15/005,619 2 glycans and other bio-molecules.” Spec. 2:7–8. “These MS active, fluorescent compounds have three functional components: (a) a tertiary amino group or other MS active atom; (b) a highly fluorescent moiety, and (c) a functional group that rapidly reacts with amines, such as an isocynanate [sic] or succidimidylcarbamate.” Id. at 2:9–12. Claims 1 and 3 are on appeal. Claim 1, reproduced below, is illustrative: 1. A compound of the structural Formula III: wherein R2a is selected from ester, amide, amine, ether, urea, carbamate, carbonate, thiol, thiourea, thiocarbamate, alkyl or carbonyl; x = 0 – 12; y = 0 – 12; z = 1 – 12; and salts or solvates thereof, wherein said compound is a mass spectrometry (MS) active, fluorescent compound. Appeal 2020-005122 Application 15/005,619 3 Claim 3 is directed to a “compound of Formula IV,” which is similar to but broader than claim 1’s Formula III. OPINION Claims 1 and 3 stand rejected under 35 U.S.C. § 102(a)(1) as anticipated by Baginski. Ans. 3. The Examiner finds that the compound of Baginski’s formula I meets the limitations of instant claim 1’s Formula III, when Baginski’s “R3 is H, Z and Y are O, p is 1, q is 0, n is 0, m is 1, R2 is –NRa-NRaRb, Ra and Rb are each independently . . . alkyl, [0029] alkyl is ethyl.” Id. The Examiner also finds that Baginski discloses that the specified compound “is a mass spectrometry active, fluorescent compound.” Id. Baginski’s formula I is: Baginski ¶ 7. Baginski discloses suitable substituents for the R1, R2, R3, R4, Y, and Z positions, and suitable numbers for m, n, p, and q. Id. ¶¶ 8–17. As we understand it, the Examiner’s position is that, if a specific set of choices was made from within the options disclosed by Baginski, the resulting compound would meet the limitations of Appellant’s claims 1 and 3. Specifically, if n and q were 0 in Baginski’s formula I (resulting in no R1 or R4 substituent); and m and p were 1 (resulting in one R2 substituent and a five-membered heterocyclic ring); R3 was H; Y and Z were both O; and R2 was –NRa-NRaRb, with both Ra and Rb being ethyl groups, the resulting Appeal 2020-005122 Application 15/005,619 4 compound would be encompassed by Appellant’s claims 1 and 3. Appellant does not dispute the Examiner’s reasoning on this point. Appellant argues, however, that “the present disclosure pertains to reagents comprising MS active, fluorescent molecules with an activated functionality for reaction with amines useful in tagging biomolecules such as N-glycans.” Appeal Br. 8. Appellant argues that the R2b moiety in claim 1’s Formula III (or the corresponding R3b moiety in claim 3’s Formula IV) “provides MS activity to the claimed compounds.” Id. at 10. Appellant argues that to provide the compound of Baginski with this feature of claims 1 and 3 as proposed in the Office Action (a) requires the selection of R2 as –NRa–NRaRb from at least 31 choices, (b) requires the selection of Ra as alkyl from at least 7 choices, followed by the selection of ethyl as the alkyl from at least . . . 12 choices, and (c) requires the selection of Rb as alkyl from at least 7 choices, followed by the selection of ethyl as the alkyl from at least 12 choices. Thus to arrive at a mass spec active portion of the claimed compounds, specifically, the moiety as claimed, requires one to choose from among at least about 218,736 possibilities (1/31 x 1/7 x 1/12 x 1/7 x 1/12). Id. at 10–11. Appellant argues that, while the claims define the mass spec active portion of the claimed compound as one of six moieties, “due to the number of variables set forth in Baginski, one would not be able to at once envisage the same moieties from the disclosure of Baginski.” Id. at 11. We agree with Appellant that Baginski’s disclosure lacks the specificity required for its formula I to anticipate the instant claims. Appellant does not dispute that the substituents of Baginski’s formula I include options that, if combined, would result in a compound meeting the Appeal 2020-005122 Application 15/005,619 5 limitations of Appellant’s claims 1 and 3. However, as the Examiner noted, a compound is anticipated [i]f one of ordinary skill in the art is able to at once envisage the specific compound within the generic chemical formula. . . . One of ordinary skill in the art must be able to draw the structural formula or write the name of each of the compounds included in the generic formula before any of the compounds can be at once envisaged. Ans. 4–5 (internal quotation marks omitted). Here, as Appellant has pointed out, even arriving at the R2b moiety of the claimed compound requires making numerous specific choices to arrive at one compound among 218,736 possibilities. In addition, Baginski discloses multiple possibilities for each of its R1, R3, R4, Y, and Z positions, as well as multiple substituents at each of m, n, p, and q in its formula I. Based on the enormous number of compounds encompassed by Baginski’s formula I, we do not agree with the Examiner’s conclusion that a person of ordinary skill in the art would have “at once envisaged” (Ans. 5) the specific compound that the Examiner finds to anticipate Appellant’s claims. The rejection of claims 1 and 3 under 35 U.S.C. § 102(a)(1) is reversed. NEW GROUND OF REJECTION Under the provisions of 37 C.F.R. § 41.50(b), we enter the following new ground of rejection: Claims 1 and 3 are rejected under 35 U.S.C. § 103 as obvious based on Baginski. Baginski’s formula I is reproduced above. Baginski also discloses compounds of formula I that have subformula Id: Appeal 2020-005122 Application 15/005,619 6 Baginski ¶ 64. The only variable position in Baginski’s formula Id is position R2, and Baginski teaches that R2 can be –NRa–NRaRb, with each of Ra and Rb “selected from the group consisting of –H, alkyl, aryl,” etc. Id. ¶ 12. Baginski states that “[t]he term alkyl . . . include[s] methyl, ethyl, n-propyl,” etc. Id. ¶ 29 (emphasis added). Thus, one of the compounds that would have been obvious based on Baginski’s subformula Id, and the disclosed possible moieties for its R2 position, meets the limitations of Appellant’s claim 1 when R1 is the second moiety shown in claim 1, R2a is amine, R2b is the first moiety shown in the claim, y is 0, and z is 2. Appellant’s claim 3 encompasses the same compound. Baginski provides a reason to make compounds defined by its formula Id because it teaches that the disclosed compounds are fluorescent monocyclic aromatics useful for rapid labeling of N-glycans, which is of considerable interest to biochemists, clinical chemists, and pharmaceutical manufacturers. Baginski ¶¶ 2, 6. Regarding the claims’ requirement that the compound of Formula III or Formula IV be “mass spectrometry (MS) active,” we agree with the Examiner that the compound made obvious by Baginski would inherently be MS active. Ans. 4. See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing.”). Appeal 2020-005122 Application 15/005,619 7 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 3 102(a)(1) Baginski 1, 3 1, 3 103 Baginski 1, 3 Overall Outcome 1, 3 1, 3 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, 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 the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED; 37 C.F.R. 41.50(b)