Ex Parte BARE et al

Board of Patent Appeals and Interferences

Sep 17, 2003

09192713 (B.P.A.I. Sep. 17, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS MICHAEL BARE,
JAMES ROY EMPFIELD,
JANET MARIE FORST,
KEITH JOHN HERZOG,
and
RICHARD BRUCE SPARKS
____________
Appeal No. 2003-0914
Application No. 09/192,713
____________
ON BRIEF
____________

Before WILLIAM F. SMITH, LIEBERMAN, and MILLS, Administrative Patent Judges.
LIEBERMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner
refusing to allow claims 47 through 54 which are all the claims pending in this application.
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THE INVENTION
The invention is directed to alpha substituted pyridazino quinoline compounds
which are fused heterocycles utilized as a pharmaceutical composition and having the
formula illustrated in the claimed subject matter below.
THE CLAIM
Claim 47 is illustrative of appellants’ invention and is reproduced below:
47. A compound of the formula Ia:
wherein:
R1 is selected from hydrogen, halo, (C1-C4)alkyl and NO2;
R2 is a cycloalkyl moiety of 5-7 carbon atoms, or R2 is a group selected from
the formulae R2' and R2"
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wherein:
R3 is selected from CF3, COOH, (C1-C6)alkylCOOH, (C1-C6) alkyl and (C1-
C6)alkylCF3;
n is selected from 0, 1 or 2;
R4 is selected from (C1-C3)alkyl or (C0-C3)alkylphenyl wherein said phenyl
moiety is substituted with 0, 1, 2, 3, 4 or 5 J moieties where J at each occurrence
is selected from halogen, (C1-C4)alkyl, NO2, CN, perfluoro(C1-C3)alkyl, OH, CF3,
(C2-C4)alkenyl, (C2-C4)alkynyl, or O-(C1-C4)alkyl;
R5 is phenyl wherein the phenyl group is substituted with 0, 1, 2, 3, 4 or 5 J
moieties where J is as in the definition of R4;
R6 is selected from hydrogen and (C1-C3) alkyl;
R7 is selected from hydrogen and C(O)(C1-C3)alkyl, and
with the proviso that said compound is not 7-chloro-4-hydroxy-2-[1-(N-
phenylcarbamoyl)ethyl]-1,2,5,10-tetrahydropyridazino[4,5-b]quinoline-1,10-
dione, 7-chloro-4-hydroxy-2-cyclohexyl-1,2,5,10-tetrahydropyridazino[4,5-
b]quinoline-1,10-dione, 7-chloro-4-hydroxy-2-(1-methylbenzyl)-1,2,5,10-
tetrahydropyridazino[4,5-b]quinoline-1,10-dione, 7-chloro-4-hydroxy-2-(1-
methylbutyl)-1,2,5,10-tetrahydropyridazino[4,5-b]quinoline-1,10-dione, 7-chloro-
4-hydroxy-2-(1-methyl-2-phenylethyl)-1,2,5,10-tetrahydropyridazino[4,5-
b]quinoline-1,10-dione, or 7-chloro-4-hydroxy-2-(1,3-dimethylbutyl)-1,2,5,10-
tetrahydropyridazino[4,5-b]quinoline-1,10-dione.
THE REFERENCE OF RECORD
As evidence in support of the obviousness type double patenting rejection, the
examiner relies upon the following reference:
Bare et al. (Bare) 5,837,705 Nov. 17, 1998

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THE REJECTION

Claims 47 through 54 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of Bare, U.S.
Patent No. 5,837,705.
OPINION
We have carefully considered all of the arguments advanced by the appellants and
the examiner, and agree with the examiner that the rejection of the claims on the grounds
of obviousness-type double patenting is well founded. Accordingly, we affirm the
rejection.
As an initial matter, it is the appellants’ position that, “[c]laims 47 to 54 inclusive
are grouped together.” See Brief, page 3. Accordingly, we select claim 47 as
representative of the claimed subject matter and limit our consideration thereto. See 37
CFR §1.192(c)(7)(2002).
The Double Patenting Rejection
All proper double patenting rejections rest on the fact that a patent has been issued
and a later issuance of a second patent will continue protection beyond the date of
expiration of the first patent of the very same invention claimed therein or of a mere
variation of that invention which would have been obvious to those of ordinary skill in the
relevant art. See In re Kaplan, 789 F.2d 1574, 1579-80, 229 USPQ 678, 683 (Fed.
Cir. 1986).
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Our analysis of the examiner's rejection of claim 47 under the doctrine of judicially
created double patenting parallels that for a Section 103 rejection. While the double
patenting rejection is analogous to a failure to meet the non-obviousness requirement of
35 U.S.C. § 103, that section is not itself involved in double patenting rejections because
the patent principally underlying the rejection is not usually prior art. In re Braat, 937
F.2d 589, 592-93, 19 USPQ2d 1289, 1291-92 (Fed. Cir. 1991); In re Longi, 759
F.2d 887, 892-93, 225 USPQ 645, 648 (Fed. Cir. 1985); In re Braithwaite, 379 F.2d
594, 600 n.4, 154 USPQ 29, 34 n.4 (CCPA 1967). When considering whether the
claimed subject matter is an obvious variation of the invention defined in the claims of the
5,837,705 patent, the disclosure of the patent may not be used as prior art.
Our analysis of the claims before us necessarily requires a comparison of the
claimed subject matter, claim 47, and claim1of the ‘705 patent. We find that claim 1 is
directed to six species of the generic compound of claim 47, which species are excluded
from the scope of claim 47 by a proviso specifically excluding them. The examiner has
found and the appellants do not dispute that the “subject matter differs only in size of alkyl
chain at 2-position where instant ‘n’ can vary from 0-2 from that particularly covered by
the ‘705 patent.” See Answer, page 4. We further find that each of the compounds in
the ‘705 patent has a 7-chloro position designated in claim 47 as R1. In contrast, claim
47 permits R1 to be halo which is inclusive of chloro, bromo, fluoro and iodo.
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1All references to the Brief are to the Amended Appeal Brief (Paper No. 26).
The appellants however, argue that, “nothing in the description of the six specific
compounds claimed in US ‘705 provides any motivation or suggestion to make anything
other than those particular compounds.” See Brief page 71. It is agreed that, “an obvious
rejection based on similarity in chemical structure and function entails the motivation of
one skilled in the art to make a claimed compound, in the expectation that compounds
similar in structure will have similar properties. See In re Payne, 606 F.2d 303, 313-14,
203 USPQ 245, 254-55 (CCPA 1979). It is well settled however, that, “[t]he name
used to designate the relationship between related compounds is not necessarily controlling;
it is the closeness of that relationship which is indicative of the obviousness or
unobviousness of the new compound.” Id. On the record before us the excluded species
of ‘705 differ from the generic formula of the claimed subject matter by the addition or
deletion of methylene units, methyl units or the substitution of a halo unit. Each of these
distinctions fall within the scope of structural obviousness. Accordingly, we conclude that
the closeness of the relationship dictates that the compounds of the claimed subject matter
are obvious variations of the compounds of claim 1 of the ‘705 patent.
It is furthermore the appellants position that inasmuch as any patent granted on the
instant application will expire on the same day as the ‘705 patent, there is no reason to
require a terminal disclaimer as, there is no “[u]njustified or improper extension of the
right to exclude.” See Brief, pages 10 -11. Furthermore, the appellants point out that as
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there is no overlap between the scope of the claimed subject matter and that of the ‘705
patent, “harassment on the basis of literal infringement by multiple assignees is not an issue
in the present circumstances.” See Brief, page 12. Accordingly, the appellants argue that
the requirement for a terminal disclaimer is unwarranted. We disagree.
The judicially created doctrine of obviousness-type double patenting remains in
effect and has not been eliminated by either Congress or any Federal court due to the
recent revisions of the patent term provisions of 35 U.S.C. § 154; and, to the extent
policy considerations have any bearing, on our decision making authority under 35 U.S.C.
§ 134. In addition, the policy rationale for the judicially created doctrine of obviousness
type double patenting remains notwithstanding the current patent term provisions of 35
U.S.C. § 154.
The amendment in 1995 to 35 U.S.C. § 154 changed in general, the term of an
issued patent from 17 years from the date of issue to 20 years from the date of
application. The change took effect on June 8, 1995 and applied to utility and plant
patent applications filed on or after that date. In 1999, Section 154 was amended again
to include limitations on extending the term of certain patents and included a provision
that:
No patent the term of which has been disclaimed beyond a specified
date may be adjusted under this section beyond the expiration date specified in
the disclaimer.
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Therefore, Congress has, in the providing for the amended statute, specifically provided for
in the statute the possibility of a terminal disclaimer being filed in an application filed on or
after June 8, 1995.
Of even greater significance, however, is the fact that obviousness-type double
patenting is a judicially created doctrine and we are therefore bound to look to our
reviewing court for any evidence that the court has signaled the demise of the doctrine. In
a recently issued decision, Eli Lily & Co., Inc. v Barr Labs., Inc., 251 F.3d 955,
58 USPQ2d 1869 (Fed. Cir. 2001), the court provided evidence in the strongest manner
imaginable that the doctrine was alive and well. The court held certain patent claims
invalid on the grounds of obviousness-type double patenting. In their opinion, the court
repeated its rationale for the doctrine as being, “to prevent unjustified timewise extension
of the right to exclude granted by a patent.” Lily at 251 F.3d 967-68, 58 USPQ2d
1878.
There are yet other compelling reasons for maintaining the requirement of a terminal
disclaimer. Initially, the patent term extension provisions of 35 U.S.C. § 154 do not
insure as the appellants have recognized, Brief, page 14, that any patent issuing on an
application filed on or after June 8, 1995, will necessarily expire 20 years from the earliest
filing date or from the earliest filing date for which benefit is claimed. Additionally, the
rules of 37 C.F.R. § 1.321 (c)(3) still require that a properly filed terminal disclaimer
include a statement that the patent and the application whose term is being disclaimed are
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only enforceable for and during the period that the two are commonly owned.
Accordingly, not requiring a terminal disclaimer on the theory that no subsequently issued
patent based on the first patent’s filing date may be extended beyond twenty years for
applications filed on or after June 8, 1995, would nullify the very purpose for which the
rule was promulgated.
Finally, as to the issue of multiple harassment, there is a lengthy discussion by the
court of a challenge to the requirement for maintaining the common assignment of
ownership of two or more patents issuing from a parent and a divisional application
wherein the filing of a terminal disclaimer has been required by this Office. See In re Van
Ornum, 686 F.2d 937, 948, 214 USPQ 761, 770, (CCPA 1982). The court held
that, “we consider it desirable to tie both the termination and the ownership of the two
patents together, as required by § 1.321(b), and, seeing no substantial obstacle to doing
so, hold it to be a valid regulation.” Accordingly, we sustain the decision of the examiner.
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DECISION
The rejection of claims 47 through 54 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of U.S. Patent
No. 5,837,705 is affirmed.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in connection with this appeal may
be extended under 37 CFR § 1.136(a).

AFFIRMED
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
PAUL LIEBERMAN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
)
DEMETRA J. MILLS )
Administrative Patent Judge )
PL:hh
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ZENECA, INC.
PATENT AND TRADEMARK ADMINISTRATOR
1800 CONCORD PIKE
P.O. BOX 15437
WILMINGTON, DE 19850-5437
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