Ex Parte Grawe et al

Board of Patent Appeals and Interferences

Mar 19, 2010

10296463 (B.P.A.I. Mar. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DETLEF GRAWE,
PETER HOSEL, UWE MULLER,
and GABRIELE WINTER1
____________________

Appeal 2009-014303
Application 10/296,463
Technology Center 1600
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Decided: March 19, 2010
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Before JAMES T. MOORE, Vice Chief Administrative Patent Judge, and
CAROL A. SPIEGEL and ERIC GRIMES, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 13, 14, 18-20, 22, 26, 28, and 30-35 (App. Br. 2; Ans.2

1 The real party in interest is BAYER SCHERING PHARMA AG (Brief On
Appeal Under 37 C.F.R. § 41.37 filed 5 December 2008 (hereinafter
"Appeal Br.") at 2).
2 Examiner's Answer mailed 2 April 2009 (hereinafter "Ans.").
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2). Claims 19 and 20, the only other pending claims, stand objected to as
being dependent upon a rejected base claim (id.). We have jurisdiction
under 35 U.S.C. § 134. We REVERSE.
INTRODUCTION
The subject matter on appeal relates to amorphous and crystalline
forms of the E-isomer of 11ß-[4-(hydroxyiminomethyl)phenyl]-17α-
methoxymethyl-17ß-methoxy-estra-4,9-dien-3-one (hereinafter "J867"),
which are substantially free from their corresponding Z-isomer, methods for
their production as well as their use in pharmaceutical compositions (Spec.3
1-2). Claims 13 and 18 are illustrative (Appeal Br. Clms. App. 16):
13. Amorphous 11ß-[4E-(hydroxyiminomethyl)phenyl]-17α-
methoxymethyl-17ß-methoxy-estra-4,9-dien-3-one,
substantially separate from its corresponding Z-isomer.

18. A crystalline solvate of 11ß-[4E-
(hydroxyiminomethyl)phenyl]-17α-methoxymethyl-17ß-
methoxy-estra-4,9-dien-3-one, substantially separate from its
corresponding Z-isomer, selected from: the methyl-tert-butyl
ether solvate, whereby the crystalline form is characterized by
the x-ray-powder diffractogram that is depicted in Figure 4c
(Table 2); and the ethanol solvate, whereby the crystalline form
is characterized by the x-ray-powder diffractogram that is
depicted in Figure 4a (Table 2).

3 Specification of the 10/296,463 application (hereinafter "Spec.").
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The Examiner has rejected claims 13, 14, 18, 22, 26, 28, and 30-35 as
unpatentable under 35 U.S.C. § 103(a) over the combined teachings of
Schubert4 and Cleve5 (Ans. 3).
The Examiner found that Schubert teaches 11-benzaldoxime-estra-
diene derivatives, including J867, but differs in failing to teach the recited
specific solvates and amorphous forms of the claimed E-isomer of J867
(Ans. 3-4). The Examiner found that Cleve teaches making various solvate
and amorphous forms of structurally similar compounds (Ans. 4). The
Examiner essentially concludes that it would have been obvious to make the
claimed amorphous and specific crystalline forms of the E-isomer of J867
using the methods of Cleve (Ans. 4) because Cleve shows the knowledge in
the art regarding the separation of isomers of structurally similar compounds
and the issue is the obviousness of the claimed compounds, not the method
of making them (Ans. 6). According to the Examiner, "established
precedent holds that products which are merely different forms of known
compounds are unpatentable where the products have the same utility as the
prior art compounds" (Ans. 4, citations omitted).
Appellants argue in relevant part that, although it would be evident to
one of ordinary skill in the art from the formula shown in Schubert that J867
has 4E/4Z stereoisomerism, Schubert provides no disclosure of separating

4 U.S. Patent 5,693,628, 11-Benzaldoxime-Estra-Diene Derivatives, Methods
for Their Production and Pharmaceuticals Containing These Compounds,
issued 2 December 1997 to Schubert et al. (hereinafter "Schubert").
5 WO 97/32890, [Z-11ß-[4-(Dimethylamino)phenyl]-17ß-Hydroxy-17α-(3-
Hydroxy-1-propenyl)estr-4-Ene-3-One As Crystalline An-Solvate, by A.
Cleve et al., published 12 September 1997 (hereinafter "Cleve"). This
decision refers to the English language translation of record by FLS, Inc.,
dated November 2007.
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the isomers or providing the E-stereoisomer, substantially separate from its
corresponding Z-isomer (Appeal. Br. 4, 10). Appellants further argue that
Cleve neither teaches nor suggests how to provide an E-isomer of J867
separate from its corresponding Z-isomer (Appeal. Br. 6-7, 10).
Thus, the dispositive issue is whether Schubert and/or Cleve teach or
suggest suitable methods for resolving the E- and Z-isomers of J867.
FINDINGS OF FACT
The following findings of fact (hereinafter "FF") are supported by a
preponderance of the evidence of record.
[1] It is undisputed that Schubert discloses a crystalline isopropanol
solvate of J867 and a method for producing it (Schubert 11:48-60;
Appeal Br. 3; Ans. 3-4).
[2] Schubert is silent regarding isomers of J867 or their resolution.
[3] Cleve teaches a process of converting a Z-isomer of 11-ß-[4-
(dimethylamino)phenyl]-17ß-hydroxy-17α-(3-hydroxy-1-
propenyl)estr-4-ene-3-one crystallized in an organic solvent to an an-
solvate form comprising removing the crystallization solvent by
heating in water (Cleve 2-4).
[4] Cleve does not teach or suggest how to resolve E- and Z-isomers of its
disclosed compound from each other.
DISCUSSION
A. Legal principles
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
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nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
Furthermore, all claim limitations must be considered. In re Royka,
490 F.2d 981, 985 (CCPA 1974). Moreover, as stated in In re Cofer,
354 F.2d 664, 667-68 (CCPA 1966):
[W]hether a given chemical compound or composition has the
same usefulness as closely related materials may be an
important consideration in determining obviousness under
35 U.S.C. § 103. But . . . [there are] other factors which must
be given weight in determining whether the subject matter as a
whole would have been obvious, namely, whether the prior art
suggests the particular structure or form of the compound or
composition as well as suitable methods of obtaining that
structure or form.

B. Analysis
Here, the claimed subject matter requires a separated E-isomer of
J867. While Schubert describes preparation of a racemic mixture of J867
containing both its E- and Z-isomers, Schubert does not teach or suggest a
method of obtaining the E-isomer of J867 substantially separate from the Z-
isomer of J867 (FF 1-2). Assuming arguendo that the compound disclosed
by Cleve was structurally similar to J867, Cleve also fails to teach or suggest
a method of resolving E- from Z-isomers of a structurally similar compound.
Since the Examiner has failed to provide a factual basis establishing a
known method of resolving J867 into its individual E- and Z-isomers based
upon the disclosures of Schubert, Cleve, or general knowledge within the
art, we reverse the rejection of claims 13, 14, 18, 22, 26, 28, and 30-35 as
unpatentable under 35 U.S.C. § 103(a) over the combined teachings of
Schubert and Cleve.
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CONCLUSION
The evidence of record fails to support the Examiner's conclusion that
the cited references render the claimed compositions obvious.
ORDER
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner rejecting claims 13, 14,
18, 22, 26, 28, and 30-35 are unpatentable under 35 U.S.C. § 103(a) over the
combined teachings of Schubert and Cleve is REVERSED.
REVERSED

clj

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