10652684 (B.P.A.I. Mar. 23, 2010)

Ex Parte Abraham

Board of Patent Appeals and InterferencesMar 23, 2010

10652684 (B.P.A.I. Mar. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte WILLIAM ABRAHAM __________ Appeal 2009-009273 Application 10/652,684 Technology Center 1600 __________ Decided: March 23, 2010 __________ Before TONI R. SCHEINER, LORA M. GREEN, and STEPHEN WALSH, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2009-009273 Application 10/652,684 STATEMENT OF THE CASE Claims 1 and 2 are representative of the claims on appeal, and read as follows: 1. A process of treating an animal subject for a pathogenic infection, wherein the infection is by a pathogen containing the enzyme 5- enolpyruvoylshikimate-3-phosphate synthase, said enzyme being susceptible to inhibition of its enzymatic activity by the herbicidal agent glyphosate, the process comprising administering to said animal subject a therapeutically or prophylactically effective amount of a glyphosate source and a dicarboxylic acid source. 2. The process of claim 1 wherein the dicarboxylic acid is oxalic acid or a salt thereof. The Examiner relies on the following evidence: Franz US 3,977,860 Aug. 31, 1976 Hasebe et al. US 5,863,863 Jan. 26, 1999 Roberts et al., Evidence of the Shikimate Pathway in Apicomplexan Parasites, 393 NATURE 801-805 (1998). Appellant relies on the following evidence: Hasebe WO 95/17817 Jul. 6, 1995 Dorland’s Illustrated Medical Dictionary 1296 (29th ed., 2000) and the http://cancerweb.ncl.acuk/cgi-bin/omd?query=oxalic+acid. We reverse. ISSUE Has the Examiner provided a sufficient reason to combine the oxalic acid from the herbicidal composition Hasebe with glyphosate for the 2 Appeal 2009-009273 Application 10/652,684 treatment of pathogenic infection in mammals as taught by Roberts to arrive at the method of claim 1? FINDINGS OF FACT FF1 The Examiner rejects claims 1-3 and 5-8 under U.S.C. § 103(a) as being rendered obvious by the combination of Roberts and Hasebe. (Ans. 3.) FF2 The Examiner finds that Roberts discloses “the treatment of mice (a mammal) infected with T. gondii tachyzoites (a pathogenic infection) with orally administered glyphosate dissolved in water.” (Id.) FF3 The Examiner notes that Roberts does not expressly disclose “the addition of a dicarboxylic acid to the composition for treatment of [a] subject with a pathogenic infection.” (Id.) FF4 The Examiner finds that Hasebe discloses “compositions comprising glyphosate and oxalic acid.” (Id.) FF5 The Examiner further finds that Hasebe teaches that “the composition comprising glyphosate and oxalic acid has enhanced medicinal efficacy.” (Id. at 4.) FF6 Specifically, Hasabe teaches a liquid enhancer composition for amino acid series herbicides that contains at least one nitrogen-containing compound and at least one oxalic acid or salt thereof. (Hasebe, col. 2, ll. 8- 18.) FF7 Hasebe teaches further that the enhancer composition “has an excellent stability with lapse of time to a change in temperatures and can markedly enhance the medicinal efficacy of an amino acid series herbicide 3 Appeal 2009-009273 Application 10/652,684 even when the composition is used in a liquid form in combination with the herbicide.” (Id. at Abstract.) FF8 In the examples, Hasebe looked at the herbicidal efficacy of compositions containing the enhancer and compared it to the herbicidal efficacy of compositions without the enhancer. (See, e.g., id. at col. 8, Example 2.) FF9 The Examiner concludes that it would have been obvious to the ordinary artisan at the time of invention to use the oxalic acid as taught by Hasebe in the method of treating a pathogenic infection as taught by Roberts because Hasebe teaches that a composition comprising glyphosate and oxalic acid has enhanced medicinal efficacy. (Ans. 4.) FF10 The Examiner rejects claims 1 and 4 under 35 U.S.C. § 103(a) as being obvious over the combination of Roberts and Hasebe as set forth above as further combined with Franz. (Id.) PRINCIPLES OF LAW While the analysis under 35 U.S.C. § 103 allows flexibility in determining whether a claimed invention would have been obvious, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), it still requires showing that “there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. “We must still be careful not to allow hindsight reconstruction of references to reach the claimed invention without any explanation as to how or why the references would be combined to produce the claimed invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3 (Fed. Cir. 2008). 4 Appeal 2009-009273 Application 10/652,684 ANALYSIS Appellant argues that Roberts, “while disclosing the use of glyphosate to treat certain apicomplexan parasites in a murine model, [does] not disclose the use of a glyphosate/dicarboxylic acid combination to treat the same.” (App. Br. 5.) Hasebe, Appellant asserts, discloses “‘an enhancer for amino acid series herbicides which has good stability to changes in temperatures even when it is stored in a liquid form over an extended period of time.’” (Id. at 6 (quoting Hasebe, col. 1, l. 66 – col. 2, l. 2).) Specifically, Appellant argues that Hasebe discloses “herbicide compositions comprising (1) a liquid enhancer composition containing (i) a tertiary amine of particular structure or derivatives thereof and (ii) at least one of an oxalic acid or salt thereof selected from the group consisting of oxalic acid, potassium oxalate, alkanolamine salts of oxalic acid, and lower alkylamine salts of oxalic acid, . . . and (2) an herbicide.” (App. Br. 6.) Appellant asserts further that Hasebe does not teach that a composition comprising glyphosate and oxalic acid has any medical efficacy at all, and that when the reference is read as a whole, it is clear that Hasebe is referring to herbicidal efficacy rather than medical efficacy. (Id. at 11.) Thus, Appellant argues that as Hasebe does not disclose the use of the herbicide compositions for the treatment of an animal subject (id. at 7), the ordinary artisan would not combine Hasebe with Roberts to arrive at the method of claim 1 (id. at 8-9). Appellant concludes: Simply stated, two references that say nothing about the use of a composition comprising a combination of glyphosate and a dicarboxylic acid for the treatment of pathogenic 5 Appeal 2009-009273 Application 10/652,684 infections in animals cannot be combined to render obvious a claim to the same. Such a combination can only be achieved through the use of Appellant’s disclosure as a template to construct the claimed invention. This form of “hindsight” analysis is neither permissible nor the standard for determining obviousness. (Id. at 12.) We agree with Appellant that the Examiner has not provided a sufficient reason as to why the ordinary artisan would have combined the oxalic acid from the herbicidal composition as taught by Hasebe with glyphosate for the in vivo treatment of pathogenic infection as taught by Roberts, to arrive at the method of claim 1. As noted by Appellant, Hasebe teaches the use of oxalic acid in herbicidal compositions, and teaches that the oxalic acid increases the herbicidal activity of the amino acid series herbicides, as well as long-term storage stability. When the Hasebe patent is read as a whole, it is clear that when Hasebe refers to medicinal efficacy, the reference is in fact referring to herbicidal activity. The Examiner therefore has not provided any reason as to why the ordinary artisan would take the oxalic acid from the herbicidal compositions taught by Hasebe and use it for the in vivo treatment of pathogenic infection as taught by Roberts. We are thus compelled to reverse the rejection. Moreover, as Franz does not remedy the deficiency of the combination of Roberts and Hasebe, we are compelled to reverse the rejection over the combination of Roberts and Hasebe as further combined with Franz, as well. 6 Appeal 2009-009273 Application 10/652,684 CONCLUSION OF LAW We conclude that the Examiner has not provided a sufficient reason to combine the oxalic acid from the herbicidal composition Hasebe with glyphosate for the treatment of pathogenic infection in mammals as taught by Roberts to arrive at the method of claim 1. We thus reverse the rejection of claims 1-3 and 5-8 under U.S.C. § 103(a) as being rendered obvious by the combination of Roberts and Hasebe, as well as the rejection of claims 1 and 4 under 35 U.S.C. § 103(a) as being obvious over the combination of Roberts and Hasebe as set forth above as further combined with Franz. REVERSED cdc SENNIGER POWERS LLP 100 NORTH BROADWAY 17TH FLOOR ST LOUIS MO 63102 7