10459563 (B.P.A.I. Mar. 15, 2011)

Ex Parte Bergeron

Board of Patent Appeals and InterferencesMar 15, 2011

10459563 (B.P.A.I. Mar. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte RAYMOND J. BERGERON JR., __________ Appeal 2010-007131 Application 10/459,563 Technology Center 1600 __________ Before DONALD E. ADAMS, DEMETRA J. MILLS and FRANCISCO C. PRATS, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL1 This is an appeal under 35 U.S.C. § 134. The Examiner has rejected the claims for anticipation. We have jurisdiction under 35 U.S.C. § 6(b). 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-007131 Application 10/459,563 2 STATEMENT OF CASE Claim 1 appears in the Appendix to the Brief and is representative. 1. A composition in unit dosage form for the inhibition, prevention or treatment of inflammatory bowel disease comprising an effective amount of a compound and a pharmaceutically acceptable carrier therefor, the compound having the formula: wherein: Z_ is CH or N; R is H or acyl; R1 R2, R3 and R5 may be the same or different and represent H, alkyl or hydrocarbyl arylalkyl having up to 14 carbon atoms; and R4is H, alkyl having 1-6 carbon atoms or OR. Cited References Appeal 2010-007131 Application 10/459,563 3 Bergeron, Jr. US 6,159,983 Dec. 12, 2000 Bergeron, Jr. US 6,689,788 B1 Feb. 10, 2004 Bergeron et al., Desazadesmethyldesferrithiocin Analogues as Orally Effective Iron Chelators, 42 J. Med. Chem. 95-108 (1999). Grounds of Rejection 1. Claims 1 and 5-8 are rejected under 35 USC § 102(b) for anticipation over Bergeron. 2. Claims 1 and 5-9 are rejected for obviousness-type double patenting over claim 1 of U.S. Patent No. 6,689,788. 3. Claims 1 and 5-11 are rejected for obviousness-type double patenting over claim 1 of U.S. Patent No. 6,159,983. FINDINGS OF FACT The findings of fact are set forth in the Answer at pages 2-5. Discussion 1. Claims 1 and 5-8 are rejected under 35 USC § 102(b) for anticipation over Bergeron. ISSUE The Examiner concludes that Bergeron teaches a composition comprising the same compound and pharmaceutically acceptable carrier, in a dosage that is encompassed by Appellant’s claimed invention and therefore anticipates the claimed composition. Appeal 2010-007131 Application 10/459,563 4 Appellant argues that the Examiner has not given weight to the preamble claim language and the “effective amount” claim language. Appellant argues that Bergeron is non-enabling for the claimed composition. The issue is: Does the preponderance of evidence on this record support a finding that Bergeron anticipates the claimed composition? PRINCIPLES OF LAW In order for a prior art reference to serve as an anticipatory reference, it must disclose every limitation of the claimed invention, either explicitly or inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). To anticipate, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “When the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in the prior art.” In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990). Cf. In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (“[T]erms [that] merely set forth the intended use for, or a property inherent in, an otherwise old composition . . . do not differentiate the claimed composition from those known in the prior art.”). “If the claim preamble, when read in the context of the entire claim, recites limitations of the claim, or, if the preamble is ‘necessary to give life, meaning, and vitality’ to the claim, then the claim preamble should be construed as if in the balance of the claim. . . . If, however, the body of the claim fully and intrinsically sets forth the complete invention, including all of the limitations, and the preamble offers no distinct definition of the Appeal 2010-007131 Application 10/459,563 5 claimed invention’s limitations, but merely states, for example, the purpose of the intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation.” Pitney Bowes, Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). “Where a patentee uses the claim preamble to recite structural limitations of his claimed invention, the PTO and courts give effect to that usage. Conversely, where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). ANALYSIS We agree with the Examiner’s fact finding, statement of the rejection and responses to Appellant’s argument as set forth in the Answer. We provide the following additional comment. Bergeron’s dosage is similar to that disclosed in Appellant’s Specification, page 14. Therefore, Bergeron teaches a composition that comprises a compound within the scope of Appellants’ claimed invention, a pharmaceutically acceptable carrier that is also, and a dosage amount of the compound that falls within the scope of Appellants’ effective amount. Stated differently, Bergeson anticipated the claimed composition. An intention to use Bergeron’s composition for a purpose other than what Bergeron may have intended does not transform Bergeron’s composition into something new. Appellant has presented no evidence that the dosage described in Bergeron would not be effective to treat inflammatory bowel disease. Appeal 2010-007131 Application 10/459,563 6 Appellant’s argument with respect to the preamble and intended use language are relevant to the method claims of the application which the Examiner has not rejected. The anticipation rejection is affirmed for the reasons of record. 2. Claims 1 and 5-9 are rejected for obviousness-type double patenting over claim 1 of U.S. Patent No. 6,689,788. 3. Claims 1 and 5-11 are rejected for obviousness-type double patenting over claim 1 of U.S. Patent No. 6,159,983. Appellant does not argue the merits of these rejections but has indicated that terminal disclaimers were filed with the Brief. (Br. 14.) Accordingly, we find that Appellant has conceded to the obviousness-type double patenting rejections. Therefore, we summarily affirm the obviousness-type double patenting rejections. CONCLUSION OF LAW The preponderance of evidence on this record supports a finding that Bergeron anticipates the claimed composition. The evidence of record supports a conclusion that Appellant conceded to the obviousness-type double patenting rejections. Accordingly, we affirm all pending grounds of rejection. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Appeal 2010-007131 Application 10/459,563 7 dm CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP 601 SW SECOND AVENUE Suite 1600 PORTLAND OR 97204-3157