Ex Parte Conner et al

Patent Trial and Appeal Board

Sep 16, 2013

12093601 (P.T.A.B. Sep. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SCOTT EUGENE CONNER,
PHILIP ARTHUR HIPSKIND, JIANKE LI, and GUOXIN ZHU
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Appeal 2012-002417
Application 12/093,601
Technology Center 1600
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Before JEFFREY N. FREDMAN, ERICA A. FRANKLIN, and
ANNETTE R. REIMERS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
4-[1-(2,6-Dimethyl-4' -trifluoromethyl-biphenyl-4-yloxy)-4,4-
dimethyl-pentyl]-N-(1H-tetrazol-5-ylmethyl)-benzamide compound and a
pharmaceutical composition comprising such compound. The Patent
Examiner rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

Appeal 2012-002417
Application 12/093,601

2
STATEMENT OF THE CASE
Claims 1-8, 17 and 18 are on appeal. The claims are set forth in the
Claims Appendix of the Appeal Brief. (App. Br. 8-16.) Claims 1-8 are
drawn to a compound of formula (I) and a composition comprised of a
compound of formula (I), which formula is shown structurally as:

In response to a restriction requirement, Appellants elected the species
4-[1-(2,6-Dimethyl-4'-trifluoromethyl-biphenyl-4-yloxy)-4,4-
dimethyl-pentyl]-N-(1H-tetrazol-5-ylmethyl)-benzamide, isomer 2, which is
the species recited in claims shown structurally as:

(see Response to Restriction Requirement, dated May 18, 2010). Each of
claims 1-8, 17 and 18 read on this elected species, which is specifically
found in claims 7 and 18. (Id.)
The Examiner rejected claims 1-8, 17 and 18 under 35 U.S.C. §
103(a) as unpatentable over Stelmach.1

1 Patent Application Publication No. WO 2006/102067 A1 by John E.
Stelmach et al., published Sep. 28, 2006.
Appeal 2012-002417
Application 12/093,601

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OBVIOUSNESS
The Examiner’s position is that Stelmach taught compounds having
the general structure shown as:

(Ans. 5). The Examiner found that the elected species is structurally similar
to the compounds taught by Stelmach. (Id.) In particular, the Examiner
found that Stelmach provides examples in which X=OC(H)-alkyl,
A=phenyl; and Ra=5-tetrazolyl. (Id.)(citing Stelmach Examples 24A, 24B
and 8). The Examiner found that the difference between the structures is
that for the elected species, Ra=CH2-5-tetrazolyl, while in Stelmach Ra=5-
tetrazolyl. (Id. at 6.) Therefore, the Examiner reasoned that the claimed
compounds and those of the prior art are similar to homologs which differ by
a –CH2- linkage. (Id.)
The Examiner found that, as with homologs, Stelmach taught that its
compounds have the same utility as the instantly claimed species, i.e., they
are both glucagon antagonists for treating Type II Diabetes. (Id.) According
to the Examiner, because the elected species is homologous to Stelmach’s
compounds, and share the same utility, the elected species would have been
prima facie obvious to a person of ordinary skill in the art at the time the
invention was made. (Id.)
Appellants contend that the structures exemplified in Stelmach upon
which the Examiner relies “are structurally very different from the presently
Appeal 2012-002417
Application 12/093,601

4
claimed and exemplified compounds.” (App. Br. 4.) In particular,
Appellants assert that Stelmach “discloses only 1 exemplified tetrazole-
containing compound, which compound would require at least 5 structural
changes to arrive at the species elected for examination in the present
application ….” (Id. at 3.) Specifically, Appellants assert:
For instance, R3 as shown in Figure A of the presently claimed
compounds cannot be hydrogen, thus arrow 1 indicates one
change that must be suggested by Stelmach. Secondly, arrow 2
indicates that the compounds of the present invention require
oxygen, whereas Example 8 of Stelmach recites carbon. Arrows
3 and 4 illustrate two phenyl substituent's at positions that are
not permitted in Figure A, as recited by R4 and R5 in the
application. Arrow 5 indicates a hydrogen in Example 8 that
must be changed to arrive at the present compound elected for
searching (Figure A2), or the compounds of Figure A, both of
which require phenyl (See R6 of Claim 1 in the application
under examination). Therefore, in order to arrive at the
compounds of the present invention, Stelmach must motivate
one of skill in the art to select both Example 24A (24B), and
Example 8, and provide the reason to make more than 5
structural changes to arrive at the specific combination of
claimed features found in the presently claimed compounds.

(Id. at 6.) According to Appellants, the Examiner has not provided a
teaching or motivation or reason which would direct one of skill in the art to
combine these two specific compounds, and to make the required structural
changes to the combination to arrive at the elected species of the presently
claimed compound. (Id.)
We agree with Appellants that the Examiner has not established that
the elected species of the claimed invention would have been obvious to a
Appeal 2012-002417
Application 12/093,601

5
person of ordinary skill in the art at the time the invention was made.2 What
is missing from the rejection is some reason that would have led the person
of ordinary skill in the art to select Stelmach’s compounds exemplified in
Examples 8, 24A, and 24B as lead compounds and further to modify those
compounds with the structural changes required to arrive at the elected
species. See Takeda Chemical Industries Ltd. v. Alphapharm Pty., Ltd., 492
F.3d 1350, 1357 (Fed. Cir. 2007).
Accordingly, we reverse the obviousness rejection.

REVERSED

cdc

2 When the Examiner has required the Applicant to elect a species for
examination, the issue on appeal is the patentability of the elected species.
We thus limit discussion to that single issue and take no position respecting
the patentability of the broader generic claims, including the remaining, non-
elected species. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987).