Ex Parte 6407079 et alDownload PDFPatent Trial and Appeal BoardApr 28, 201490010886 (P.T.A.B. Apr. 28, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 90/010,886 03/04/2010 6407079 JJ-0264 / JAB445581 2270 23377 7590 04/28/2014 BAKER & HOSTETLER LLP CIRA CENTRE 12TH FLOOR 2929 ARCH STREET PHILADELPHIA, PA 19104-2891 EXAMINER JONES, DWAYNE C ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 04/28/2014 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 PATENT TRIAL AND APPEAL BOARD __________ Ex parte JANSSEN PHARMACEUTICA N.V. Appellant __________ Appeal 2014-001666 Reexamination Control 90/010,886 Technology Center 1600 Patent No. US 6,407,079 B1 __________ Before DONALD E. ADAMS, ERIC GRIMES, and ULRIKE W. JENKS, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION ON APPEAL Janssen Pharmaceutica (“Janssen”)1 appeals under 35 U.S.C. § 134(b) and 35 U.S.C. § 306 from a final rejection of claims 1-20 and 22-40. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. An oral hearing was held on April 9, 2014. We reverse. 1 Janssen Pharmaceutica N.V. is said to be the real party in interest and assignee of the patent under reexamination. (App. Br. 1.) Appeal 2014-001666 Reexamination Control 90/010,886 Patent No. US 6,407,079 B1 2 STATEMENT OF THE CASE Reexamination Proceedings A request for ex parte reexamination of U.S. Patent No. 6,407,079 (the ’079 patent) was filed on March 4, 2010, and was assigned Reexamination Control No. 90/010,886. The ’079 patent, entitled “PHARMACEUTICAL COMPOSITIONS CONTAINING DRUGS WHICH ARE INSTABLE OR SPARINGLY SOLUBLE IN WATER AND METHODS FOR THEIR PREPARATION,” issued June 18, 2002, to Bernd W. Müller, and Ulrich Brauns, based on Application No. 07/264,726, filed Oct. 31, 1988. The ’079 patent claims the benefit, under 35 U.S.C. § 120, to Application No. 06/756,498. The effective filing date of the ’079 patent is said to be July 3, 1985. Appellant’s Invention The ’079 patent relates to pharmaceutical compositions comprising a partially etherified β-cyclodextrin in combination with a drug that is sparingly soluble in water and that fits into the cavity of the β-cyclodextrin ring. The claims are reproduced in the Claims Appendix of the Appeal Brief. For reference convenience, independent claim 1 is reproduced below: 1. Pharmaceutical composition comprising an inclusion compound of (i) a drug capable of fitting into the cavity of the cyclodextrin ring system which is instable or only sparingly soluble in water with (ii) a partially etherified β-cyclodextrin of the formula (β-CD)-OR wherein Appeal 2014-001666 Reexamination Control 90/010,886 Patent No. US 6,407,079 B1 3 the residues R are hydroxyalkyl groups and part of said residues R may optionally be alkyl groups, the β-cyclodextrin ether having a water solubility of greater than 1.8 g in 100 ml water, wherein said composition has considerably increased water solubility and stability relative to said drugs, with very low toxicity. (App. Br. 20) The Rejections I. Claims 1, 2, 4, 5, 18, 19, and 23 stand rejected under 35 U.S.C. § 103(a) as being obvious over Fenyvesi;2 II. Claims 6-11, 20, 22, 24, 36, and 40 stand rejected under 35 U.S.C. § 103(a) as being obvious over Fenyvesi; III. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being obvious over Fenyvesi in view of Gramera;3 and IV. Claims 12-17, 25-35, and 37-39 stand rejected under 35 U.S.C. § 103(a) as being obvious over Fenyvesi in view of Gramera. ISSUE Does the evidence of record support the Examiner’s conclusion that Fenyvesi alone or in combination with Gramera renders the claimed pharmaceutical composition obvious? 2 Fenyvesi et al., Water-Soluble Cyclodextrin Polymers and Their Complexing Properties, Int'l Symposium on Cyclodextrins, 1981. 3 Gramera et al., US 3,459,731, issued Aug. 5, 1969. Appeal 2014-001666 Reexamination Control 90/010,886 Patent No. US 6,407,079 B1 4 FINDINGS OF FACT ’079 Patent 1. The background section of the ’079 patent teaches that “the β-cyclodextrin itself is only poorly water-soluble (1.8 g/100 ml).” (Col. 1, ll. 51-52.) However, derivatives of β-cyclodextrin are found to be considerably more soluble. (Col. 1, ll. 54-55.) Specifically, the background teaches that a German reference “discloses a solubilization method using methylated β-cyclodextrin as monomethyl derivative with 7 methyl groups and especially as dimethyl derivative with 14 methyl groups. With the 2,6- di-O-methyl derivative it is for instance possible to increase the water solubility of indometacin [sic] 20.4-fold and that of digitoxin 81.6-fold.” (Col. 1, ll. 57-62.) 2. The background section of the ’079 patent further teaches that “for therapeutical use the methyl derivatives of β-cyclodextrin show serious draw backs. Due to their increased lipophility they have a haemolytic effect and they further cause irritations of the mucosa and eyes. Their acute intravenous toxicity is still higher than the already considerable toxicity of the unsubstituted β-cyclodextrin.” (Col. 1, l. 63 to col. 2, l. 1; see also col. 7, ll. 26-32 (“the haemolytic effect of the hydroxypropylmethyl ether is about 5 to 8 times weaker than that of the dimethyl ether according to the prior art. Animal tests have further shown that the hydroxyalkyl ethers do not cause irritation of the mucosa and eyes in contrast to the methyl ethers”).) App Reex Paten haem meth (Col that react Inclu appr studi (Fen eal 2014-0 amination t No. US 3. Ta olysis wit yl derivat . 7, ll. 16-2 4. Fe are extrem ion param sion comp opriate gu ed and the 5. Fe The mos form inc By [usin poorly cyclodex polymer presence yvesi 346. 01666 Control 9 6,407,079 ble 6 of th h the use o ives of cyc 5.) nyvesi dis ely solubl eters on th lexes of th est molecu ir stability nyvesi dis t importan lusion com g] approp soluble trin deriv s which a of compl ) 0/010,886 B1 e ’079 pa f hydroxy lodextrin. 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Fe cule in a β 01666 Control 9 6,407,079 nyvesi dis dextrin con in [sic] to / mainly s rmed. . . . 00 ml and ht” of MW nyvesi dis β-cyclode produced on at 520 n s of β-cyc ht / MW= nyvesi dis -cyclodex 0/010,886 B1 closed “th centration cyclodextr imple der The prod 42 g/100 m = 2500 an closed an xtrin deriv above show m in the p lodextrin 1500 and closed inc trin polym 6 ree produc with the in /10:1/. ivatives of ucts obtain l cyclode d MW = 5 increase in atives. s an “[i]n resence o polymer h 8300 respe orporating er (Fenyv ts prepare same mola In diluted average m ed in the s xtrin have 600, respe the absor crease in f β–cyclod aving low ctively.” indometh esi 353). d from sol r ratio of solutions olecular w olutions c the avera ctively. ( ption of C absorption extrin /o/ /+/, and h (Fenyvesi acin as a g utions of /20 g/100 eight MW ontaining ge Fenyvesi ongo red of congo [control] igh /x/ 354.) uest Appeal 2014-001666 Reexamination Control 90/010,886 Patent No. US 6,407,079 B1 7 9. The Examiner finds that Fenyvesi disclosed monomeric inclusion complexes. Fenyvesi specifically discloses that the molecular weight (MW) of cyclodextrin is 1134 (page 349). Accordingly, a multiple, n, where n is a positive integer of the MW of β-CD (n *MW of β-CD) would result in a particular oligomer or polymer of β - CD. For example, a dimer (n = 2) of β-CD would need to have at least a MW = 2268 (two times the MW of the monomer), while a tetramer (n = 4) of β -CD would need to have at least a MW = 4536 (four times the MW of the monomer), and a septamer (n = 7) of β-CD would need to have at least a MW = 7938. Thus, Fenyvesi clearly teaches partially etherified (derivatized) monomers of β-CD. (Ans. 6; 7, 22, 24, 28; see also Fenyvesi 349, 351, 352, Figs. 5 & 6.) ANALYSIS There are four rejections based on obviousness, and all are premised, in whole or in part, on the teachings of Fenyvesi, so we will discuss them together. Based on Fenyvesi, the Examiner concludes that, at the time Appellant’s invention was made, it would have been prima facie obvious to an ordinary artisan to take Fenyvesi’s disclosed partially etherified β-cyclodextrin monomer and add a poorly water soluble drug to form an inclusion complex. Specifically, the Examiner asserts that “[a]t the time of the invention, one having ordinary skill in the art would have been motivated to select a monomeric species of a partially etherified β-CD from the teachings of Fenyvesi to form an inclusion complex of a partially etherified monomer of β-CD and a poorly soluble pharmaceutical with a predictable and reasonable expectation of successfully improving the solubility of the Appeal 2014-001666 Reexamination Control 90/010,886 Patent No. US 6,407,079 B1 8 drug in order to arrive at the claimed invention” (Ans. 7). We are not persuaded. Appellant’s claim 1 requires an inclusion compound of (1) a drug that is (a) capable of fitting into the cavity of the cyclodextrin ring system and (b) which is instable or only sparingly soluble in water and (2) a partially etherified β-cyclodextrin. Fenyvesi disclosed monomeric β-cyclodextrin derivatives complexed with Congo red as a guest molecule (Ans. 7; see also FFs 4-7). In addition, Fenyvesi also disclosed polymeric β-cyclodextrin complexed not only with Congo red but also with indomethacin as a guest molecule (FFs 7 & 8). The Examiner acknowledges “Fenyvesi does not specifically disclose or provide an example of a partially etherified (derivatized) monomer of β-CD that is complexed with a drug as claimed” (Ans. 7). The Examiner, nevertheless, reasons that the inclusion complex of a drug with a monomeric β-cyclodextrin derivative would be obvious based on Fenyvesi’s disclosure (id.). Appellant contends, among other things, that the Examiner is impermissibly relying on an obvious to try rationale, especially in light of the assertion that at time the invention was made one of ordinary skill in the art would have recognized that “for therapeutical use the methyl derivatives of β-cyclodextrin show serious draw backs. Due to their increased lipophility they have a haemolytic effect and they further cause irritations of the mucosa and eyes.” (App. Br. 11; see also Reply Br. 3; FFs 2 & 3.) Appellant additionally points to the Specification’s evidence that shows “the claimed compositions are [indeed] less haemolytic and irritating to mucosa Appeal 2014-001666 Reexamination Control 90/010,886 Patent No. US 6,407,079 B1 9 and eyes than the noted prior art methyl derivatives.” (App. Br. 11; see also FFs 2 & 3.) The Examiner acknowledged that Appellant’s compositions are less haemolytic and less irritating, specifically recognizing that “[t]he data presented in Table 6 does show improvement over methylated derivatives of β-cyclodextrins is not contested” (Ans. 36). The Examiner, nevertheless, maintains the position that Fenyvesi makes use of the hydroxyalkyl group of a dihydroxypropyl moiety to partially etherify a β-cyclodextrin as does the ’079 Patent. Therefore, one skilled in the art would predictably and reasonably expect the derivatized β-cyclodextrin monomers of Fenyvesi to possess similar properties (i.e., less haemolytic and irritating to mucosa and eyes than noted prior art[ ] methyl derivatives) with success. (Ans. 36-37.) Thus, the Examiner’s position is that compounds having similar structure would be expected to have similar properties. We recognize, but are not persuaded by the Examiner’s assertion. First, the reaction that the Examiner identifies as producing a dihydroxypropyl β-cyclodextrin derivative is characterized by Fenyvesi as a side reaction (Fenyvesi 346: “side reactions can occur of which the most important is the hydrolysis of epoxy groups”). Fenyvesi discloses that the resulting hydroxy groups can react with another molecule of epichlorohydrin or an epoxy group coupled to cyclodextrin, resulting in chains of different length connecting cyclodextrin rings (id.). Thus, although Fenyvesi’s reaction product contains some monomeric dihydroxypropyl β-cyclodextrin ether derivative, Fenyvesi does not describe it as an intended or desired product. In addition, even if Appeal 2014-001666 Reexamination Control 90/010,886 Patent No. US 6,407,079 B1 10 Fenyvesi’s disclosed β-cyclodextrin monomers are expected to behave in the same way as the claimed β-cyclodextrin monomers if they were complexed with a poorly soluble drug, the fact remains that Fenyvesi does not disclose a monomeric β-cyclodextrin derivative complexed with “a drug capable of fitting into the cavity of the cyclodextrin ring system which is instable or only sparingly soluble in water.” As such, Fenyvesi’s disclosure does not provide a composition that is identical to the claimed composition. What is missing from the Examiner’s analysis is an explanation why the ordinary artisan knowing that β-cyclodextrin derivatives are haemolytic and irritating would have even looked to Fenyvesi’s monomeric β-cyclodextrin derivatives and considered formulating these derivatives into a pharmaceutical as a carrier (FFs 2-3). A rejection for obviousness must include “articulated reasoning with some rational underpinning to support the legal conclusion.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Because the Examiner’s rejection does not explain why the ordinary artisan would have considered it reasonable to investigate a particular class of compounds, especially a class that was known to include members that are toxic, and formulate them into a pharmaceutical we find that the Examiner has not met the burden of articulating a sufficient reason for a finding of obviousness. Accordingly, we agree that the Examiner has failed to identify a sufficient evidentiary basis on this record that supports the Examiner’s rationale of formulating a poorly soluble drug with the β-cyclodextrin derivative of Fenyvesi as a carrier. Appeal 2014-001666 Reexamination Control 90/010,886 Patent No. US 6,407,079 B1 11 Appellant’s remaining independent claims 12, 24, 27, and 31 also require the combination of a drug and a monomeric β-cyclodextrin derivative. For the reasons discussed above, the Examiner has not shown that this combination would have been obvious based on the cited prior art. DECISION The preponderance of evidence relied on by the Examiner fails to support a conclusion of obviousness. The rejections of claims 1-20 and 22-40 under 35 U.S.C. § 103(a) are reversed. REVERSED cam Copy with citationCopy as parenthetical citation