Becker, Heinrich et al.

Patent Trials and Appeals Board

Oct 11, 2019

14913086 - (D) (P.T.A.B. Oct. 11, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/913,086 02/19/2016 Heinrich Becker 6000.0022-22US 8166
103651 7590 10/11/2019
Kim IP Law Group PLLC
129 W. Evesham Road
Voorhees, NJ 08043
EXAMINER
MC GINTY, DOUGLAS J
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
10/11/2019 ELECTRONIC
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEINRICH BECKER and FRANK VOGES
Appeal 2018-008108
Application 14/913,086
Technology Center 1700
BEFORE LINDA M. GAUDETTE, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 27–35 and 37–55. Final Act. 1.3 A hearing
was held on October 1, 2019.

1 This Decision includes citations to the following documents: Specification
filed Feb. 19, 2016 (“Spec.”); Final Office Action dated Oct. 16, 2017
(“Final”); Advisory Action dated Jan. 17, 2018 (“Advisory Act.”); Appeal
Brief filed Apr. 30, 2018 (“Appeal Br.”); Examiner’s Answer dated June 7,
2018 (“Ans.”); and Reply Brief filed Aug. 7, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to the “Applicant” as defined in
37 C.F.R. § 1.42(a). The Appellant is Merck Patent GmbH, also identified as
the real party in interest. Appeal Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2018-008108
Application 14/913,086

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We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to metal complexes. Spec. 1:2. Claim 27,
reproduced below, is illustrative of the claimed subject matter:
27. A compound of formula (1):
[(The figure above shows the structure
of the formula (1) compound.)]
wherein
M is Al, Zr, Hf, Li, Na, K, Rb, or Cs;
X is S or O;
R is a branched or cyclic alkyl or alkoxy group
having 3 to 40 C atoms, which in each case is
optionally substituted by one or more radicals Rs,
wherein one or more non-adjacent CH2 groups are
optionally replaced by RaC=CRa, C≡C, Si(Ra)2,
Ge(Ra)2, Sn(Ra)2, C=O, C=S, C=Se, C=NRa
P(=O)(Ra), SO, SO2, NRa, O, S, or CONRa and
wherein one or more H atoms are optionally
replaced by D, F, Cl, Br, I, CN, or NO2, or an
aromatic or heteroaromatic ring system having 5 to
60 aromatic ring atoms and which contains a
radical Rb in at least one ortho-position relative to
the bonding site to the quinoline ring and is
optionally substituted by one or more radicals Ra;
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Application 14/913,086

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Ra is on each occurrence, identically or differently, H,
D, or an alkyl group having 1 to 20 C atoms, an
aromatic ring system having 6 to 60 C ring atoms,
or a heteroaromatic ring system having 1 to 60 C
ring atoms, wherein one or more H atoms are
optionally replaced by D or F, and wherein two or
more adjacent substituents Ra optionally define a
mono- or polycyclic, aliphatic, aromatic, or
heteroaromatic ring system with one another;
Rb is on each occurrence, identically or differently, an
alkyl group having 1 to 20 C atoms, an aromatic
ring system having 6 to 60 C ring atoms, or a
heteroaromatic ring system having 1 to 60 C ring
atoms, wherein one or more H atoms are
optionally replaced by D or F, and wherein two or
more adjacent substituents Rb optionally define a
mono- or polycyclic, aliphatic or aromatic ring
system with one another;
n is 4 for Zr and Hf, 3 for Al, and 1 for Li, Na, K,
Rb, and Cs;
with the proviso that, if R is an aromatic ring system
which contains a radical Rb in only one ortho-position to
the quinoline ring, the radical Rb has at least 2 C atoms.
Appeal Br. 10–11 (Claims Appendix).
REFERENCE
The Examiner relies on the following reference as evidence of
unpatentability:
Ganeshamurugan US 2010/0289009 A1 Nov. 18, 2010

REJECTIONS
1. Claims 27–35, 37, 38, and 40–55 are rejected under 35 U.S.C.
§ 102(a1, a2) as anticipated by Ganeshamurugan.
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2. Claims 27–35 and 37–55 are rejected under 35 U.S.C. § 103 as
unpatentable over Ganeshamurugan.
OPINION
The Examiner rejected claims 27–35, 37, 38, and 40–55 under
35 U.S.C. § 102(a1, a2) as anticipated, and claims 27–35 and 37–55 under
35 U.S.C. § 103 as obvious. For the reasons discussed below, we reverse the
anticipation rejection, but sustain the obviousness rejection.
Anticipation Rejection
The Examiner found that “[t]he lithium quinolate shown within the
brackets of the formula at [paragraph 97] of [Ganeshamurugan]
correspond[s] to formula (1) of present claim 1 [sic, 27] . . . when X = O, M
= Li, and n = 1. Final 6–7; Ans. 7, 9–10. The Examiner also cited
Ganeshamurugan paragraph 104 as teaching “the ‘monomer’ formula for the
basic skeleton structure.” Advisory Act., Continuation Sheet. The Examiner
acknowledged that Ganeshamurugan does not teach expressly that R1 is tert-
butyl. Final 5. The Examiner found, however, that Ganeshamurugan teaches
R1 as C4. Id. The Examiner found that because tert-butyl is one among a
limited number of C4 isomers, “[t]he t-butyl group would have been ‘at once
envisaged’ from the limited number of possibilities.” Id.
The Appellant argues that Ganeshamurugan does not disclose that the
quinolate of formula (I) may be a monomer, as claimed. Appeal Br. 6. As to
Ganeshamurugan paragraph 97, the Appellant argues that Ganeshamurugan
discloses that variable “n” in formula (I) must be an integer from 2 to 6, i.e.,
the quinolates of Ganeshamurugan’s formula (I) must be a dimer, a trimer, a
tetramer, a pentamer, or a hexamer. Appeal Br. 6. As to Ganeshamurugan
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paragraph 104, which includes a table listing the observed mass
spectrometer peaks of four compounds, the Appellant argues that when this
disclosure is read in light of paragraph 105, it is clear that Ganeshamurugan
“only teaches oligomers of its quinolates of formula (I).” Appeal Br. 6–7;
see Ganeshamurugan ¶ 105 (“Observed MS peaks, as indicated in the above
table, indicated that the compounds formed oligomeric species”).
The Appellant further argues that, contrary to the Examiner’s
contention that the claimed monomer would have been at once envisaged,
in order to arrive at Appellant’s elected species from the
quinolates of formula (I) of Ganeshamurugan, persons of
ordinary skill in the art would have to (1) select hydrogen (“H”)
for R2, (2) select the nitrogen-containing ring of the quinolate
group for substitution by R 1, (3) select a C4 alkyl group for R 1
from amongst the large list of possible substituents provided at
paragraph [0098] of Ganeshamurugan, and (4) select a tert-
butyl group over an n-butyl, sec-butyl, or isobutyl group as the
C4 alkyl group.
Appeal Br. 7; see Ganeshamurugan ¶ 98 (“R1 and R2 . . . may be the same or
different and . . . are selected from H, C1 to C4 alkyl, and substituted or
unsubstituted monocyclic or polycyclic aryl or heteroaryl, aralk-(C1-C4)-yl,
or aryloxy . . . .”).
“To anticipate, a prior art reference must place the inventive
compound or composition in the possession of the public.” Eli Lilly and Co.
v. Zenith Goldline Pharms., Inc., 471 F.3d 1369, 1375 (citing In re Brown,
329 F.2d 1006, 1011 (CCPA 1964)). In Eli Lilly, the Federal Circuit
explained that a finding of anticipation may be appropriate where a prior art
reference “spell[s] out a definite and limited class of compounds that
enable[] a person of ordinary skill in the art to at once envisage each
member of this limited class.” Id. at 1376 (discussing In re Schaumann, 572
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F.2d 312 (CCPA 1987) (finding anticipation where the prior art “disclosed
14 compounds, later further narrowed to 7, considering express preferences[,
and] . . . the structural formula of this prior art contained but a single
variable”) and In re Petering, 301 F.2d 676 (CCPA 1962) (finding
anticipation where “the prior art disclosed a limited number of specific
preferences from a specifically defined group of isoalloxazines”)).
The Appellant has argued persuasively that Ganeshamurugan does not
spell out a definite and limited class of compounds such that the ordinary
artisan would have at once envisaged the claimed formula (1). See citations
and quotations from Appeal Br. 6–7 supra pp. 4–5. Accordingly, we do not
sustain the rejection of claims 27–35, 37, 38, and 40–55 under 35 U.S.C.
§ 102(a1, a2) as anticipated by Ganeshamurugan.
Obviousness Rejection
The Examiner finds that even if some picking and choosing were
necessary, the claimed formula (1) would have been obvious in view of the
close structural similarity of claimed formula (1) and Ganeshamurugan’s
formula (I), and the limited number of possibilities disclosed for substituents
R1 and R2. Ans. 10.
The Appellant argues that “[t]he Examiner has provided no evidence
or other reasoning supported by the evidence that would give persons of
ordinary skill in the art reason to deviate from Ganeshamurugan’s dimers,
trimers, tetramers, pentamers, or hexamers.” Appeal Br. 8.
As explained by the Federal Circuit,
[t]he “reason or motivation” [to make a claimed compound]
need not be an explicit teaching that the claimed compound will
have a particular utility; it is sufficient to show that the claimed
and prior art compounds possess a “sufficiently close
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relationship . . . to create an expectation,” in light of the totality
of the prior art, that the new compound will have “similar
properties” to the old. [In re Dillon, 919 F.2d 688, 692 (Fed.
Cir. 1990) (en banc)]; see also In re Wilder, 563 F.2d 457, 460
([CCPA] 1977) (“[O]ne who claims a compound, per se, which
is structurally similar to a prior art compound must rebut the
presumed expectation that the structurally similar compounds
have similar properties.”). Once such a prima facie case is
established, it falls to the applicant or patentee to rebut it, for
example with a showing that the claimed compound has
unexpected properties. Dillon, 919 F.2d at 692.
Aventis Pharma Deutschland GmbH v. Lupin, Ltd., 499 F.3d 1293, 1301
(Fed. Cir. 2007). The Appellant does not dispute that the claimed formula
(1) is structurally similar to Ganeshamurugan’s formula (I). See Appeal Br.
8; Reply Br. 2. Moreover, the Appellant has not identified, nor do we find,
any disclosure in Ganeshamurugan that suggests that the ordinary artisan
would not have reasonably expected a lithium quinolate having the structure
of Ganeshamurugan’s formula (I), where n=1, to have similar properties to a
lithium quinolate having the structure of Ganeshamurugan’s formula (I),
where n=2 to 6.
The Appellant further argues that the ordinary artisan “would have
[had] to make numerous additional selections with regard to substituents R1
and R2 to arrive at Appellant's elected species — selections for which neither
Ganeshamurugan nor the Examiner provides any suggestion or motivation to
make.” Appeal Br. 8.
We are not persuaded that the Examiner reversibly erred in
determining that one of ordinary skill in the art would have been motivated
to select a t-butyl group and hydrogen for the substituents R1 and R2,
respectively, given the limited list of possible substituents identified in
Ganeshamurugan paragraph 98. As explained by our reviewing court,
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[t]hat the [cited] patent discloses a multitude of effective
combinations does not render any particular formulation less
obvious. This is especially true because the claimed
composition is used for the identical purpose taught by the prior
art [(compare Ganeshamurugan ¶ 1, with Spec. 1:8–14)]. See In
re Corkill, 771 F.2d 1496, 1500 . . . (Fed. Cir. 1985)
(obviousness rejection of claims affirmed in light of prior art
teaching that “hydrated zeolites will work” in detergent
formulations, even though “the inventors selected the zeolites
of the claims from among ‘thousands' of compounds”); In re
Susi, 440 F.2d 442, 445 . . . ([CCPA] 1971) (obviousness
rejection affirmed where the disclosure of the prior art was
“huge, but it undeniably include[d] at least some of the
compounds recited in appellant’s generic claims and it is of a
class of chemicals to be used for the same purpose as
appellant's additives”).
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(alteration to Susi parenthetical in original).
In sum, for the reasons stated above, we determine the Examiner’s
fact finding and reasoning establishes a prima facie case of obviousness. The
Appellant has not provided persuasive arguments or evidence to rebut the
prima facie case of obviousness. Accordingly, we sustain the rejection of
claim 27 under 35 U.S.C. § 103 as obvious over Ganeshamurugan. We also
sustain the rejection as to dependent claims 28–35 and 37–55, as the
Appellant has not made separate arguments in support of patentability of
these claims. See Appeal Br. 9.

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CONCLUSION
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
27–35, 37,
38, 40–55
102(a1, a2) Ganeshamurugan 27–35, 37,
38, 40–55
27–35, 37–55 103 Ganeshamurugan 27–35,
37–55

Overall
Outcome
27–35,
37–55

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED