Ex Parte Gellman et al

Board of Patent Appeals and Interferences

Mar 9, 2012

11482638 (B.P.A.I. Mar. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SAMUEL H. GELLMAN,
DANIEL H. APPELLA, HEE-SEUNG LEE,
PAUL LEPLAE, EMILIE PORTER, XIFANG WANG,
and MATTHEW WOLL
__________

Appeal 2011-000723
Application 11/482,638
Technology Center 1600
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants have requested rehearing of the decision entered December
16, 2011 (“Decision”), in which we affirmed the Examiner’s anticipation
rejection of claims 1-4, 6, 7, 9, 18, and 19.
Appellants’ request for rehearing is denied.

Appeal 2011-000723
Application 11/482,638

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DISCUSSION
In response to a species election requirement, Appellants elected the
following compound for prosecution on the merits:

in which “Fmoc” represents a 9-fluorenylmethyloxycarbonyl protecting
group and “Boc” represents a t-butoxycarbonyl protecting group (see App.
Br. 8; see also Ans. 3, 6). Our analysis is thus limited to the patentability of
the elected compound, and the extent to which the appealed claims read on
it. See Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987).
The Examiner rejected claims 1-4, 6, 7, 9, 18, and 19 under 35 U.S.C.
§ 102(b) as anticipated by Schinnerl1 (Ans. 4-5). Appellants did not dispute
the Examiner’s finding that Schinnerl described a compound with all of the
features of the elected compound, but instead argued that the instant
application was entitled to priority to divisional parent application
09/833,496, filed April 11, 2001, which antedates the 2003 publication date
of Schinnerl (App. Br. 8).
In their Appeal Brief, Appellants contended that the Examiner erred in
denying priority because “the exact elected compound, minus the BOC
protecting group, is disclosed verbatim in the ‘496 Application as filed at
page 6” which provides the following structural formula:

1 Marina Schinnerl et al., Asymmetric Synthesis of a New Helix-Forming β-
Amino Acid: trans-4-Aminopiperidine-3-carboxylic Acid, 2003 EUR. J. ORG.
CHEM. 721-726 (2003).
Appeal 2011-000723
Application 11/482,638

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(App. Br. 9 (italicized emphasis added); see also Decision 3-4.)
Inconsistent with this original position, in the Request for Rehearing
Appellants now urge that the elected species “is exactly disclosed in the
Markush group spanning pages 5-7 of the specification” (Req. Reh’g 3).
Thus, contrary to the arguments originally advanced, Appellants now
contend, in effect, that the Markush group describing the compounds of
Appellants’ invention (Spec. 5-8)2 actually includes a description of a Boc
group at the R3 substituent, when R3 is bonded to the ring nitrogen.
We acknowledge that page 6 of the Specification expressly identifies
the R1 substituent bonded to the exocyclic nitrogen as being either hydrogen
or “an amino protecting group” (Spec. 6). We agree that an ordinary artisan
viewing this disclosure may have found that Appellants invented a
compound in which the amino protecting group Fmoc, which was actually
used to protect the exocyclic amino group in an exemplified synthesis (see
id. at 29), was at the R1 position.
In contrast to substituent R1, however, the Markush group describing
the compounds of Appellants’ invention simply does not identify R3 as being
an “amino protecting group” (see id. at 5-8). Thus, because of the shift in
Appellants’ position, the request for rehearing simply does not explain why
our Decision misapprehended or overlooked any point of law or fact in

2 It is undisputed that, because this application is a divisional of the allegedly
antedating ‘496 application, the specifications of the two applications are
identical. We cite to the instant Specification for convenience.
Appeal 2011-000723
Application 11/482,638

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finding that the Specification fails to describe a Boc moiety as substituent R3
when R3 is bound to the ring nitrogen (see Decision 7).
While Appellants direct our attention to Reaction 7 at page 55 of the
Specification (Req. Reh’g 3), this is a new argument which we will not
consider. See 37 C.F.R. § 41.52(a)(1) (“Arguments not raised in the briefs
before the Board and evidence not previously relied upon in the brief and
any reply brief(s) are not permitted in the request for rehearing except as
permitted by paragraphs (a)(2) and (a)(3) of this section.”). Moreover, that
section of the Specification does not appear to discuss substituents that may
be bonded to the ring nitrogen, but instead explains which groups may be
used to protect the exocyclic amine during chemical peptide synthesis (see
Spec. 55-56).
Appellants also cite In re Wertheim, 541 F.2d 257, 262 (CCPA 1976),
Union Oil Company of California v. Atlantic Richfield Co., 208 F.3d 989,
1000 (Fed. Cir. 2000), and Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir.
2005), to show that our decision misapprehended the controlling law in
citing In re Ruschig, 379 F.2d 990, 995 (CCPA 1967) (see Req. Reh’g 4-5).
We do not find these cases factually on point, however.

SUMMARY
Appellants’ arguments do not persuade us that our decision affirming
the Examiner’s anticipation rejection misapprehended or overlooked any
point of fact or law in finding that Appellants’ priority application fails to
describe the compound Appellants elected to prosecute. We therefore
decline to modify our original decision entered May December 16, 2011.

Appeal 2011-000723
Application 11/482,638

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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REHEARING DENIED

cdc