Ex Parte Hall-Goulle et al

Board of Patent Appeals and Interferences

Sep 27, 2010

10583012 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte VERONIQUE HALL-GOULLE and
ATHANASSIOS TZIKAS
__________

Appeal 2010-002396
Application 10/583,012
Technology Center 1600
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a reactive
polysaccharide derivative. The Examiner has rejected the claims as

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 2010-002396
Application 10/583,012

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being made obvious by the prior art. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1-5, 7, 10 and 16 are on appeal. The claims are directed to
reactive polysaccharide derivatives having a structure corresponding to a
defined chemical formula. Applicants have elected the following species
(Appeal Br. 4-5), where CD means cyclodextrin:

Issue
The Examiner has rejected claims 1-5, 7, 10 and 16 under 35 U.S.C.
§ 103(a) as being obvious in view of Reuscher.2 The Examiner finds that
Reuscher discloses “cyclodextrin derivatives having nitrogen-containing
heterocycles” (Answer 3-4). The Examiner concludes that, although
Reuscher does not exemplify the elected species, it “would have been
obvious to one of ordinary skill in the art to prepare the … elected species”
based on Reuscher’s teachings (id. at 4).
Appellants contend that the elected species would not have been
suggested by Reuscher because the compound suggested by Reuscher that is
closest to the elected species has the following structure:

2Reuscher et al., US 5,728,823, Mar. 17, 1998
Appeal 2010-002396
Application 10/583,012

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(Appeal Br. 5-6.) Appellants contend that the elected species would not have
been obvious in view of Reuscher because the above compound has a -CHR4-
group in the chain to the left of the heterocyclic ring, where the elected
species has an ethylene (-CH2-CH2-) group, and therefore Reuscher’s genus
does not overlap the elected species (id. at 6).
The main issue presented is: Does the evidence of record support the
Examiner’s conclusion that the elected species of the claims on appeal would
have been obvious based on Reuscher?
Findings of Fact
1. Reuscher discloses “reactive cyclodextrin derivatives which contain
at least one nitrogen-containing heterocycle” (Reuscher, col. 1, ll. 41-43).
2. According to Appellants, Reuscher describes the disclosed
cyclodextrin derivatives
in col. 2, line 30 through col. 4, line 19. The closest generically
disclosed compound of Reuscher to the present elected specie is
when R is R2 where R2 is -R3m-(CHR4)-R5-R6. R3 may be -NR7
where R7 is alkyl. R5 may be -NH-. R6 may be a triazine moiety
substituted by Cl and by -NR10R11 where R11 may be -Ph-
SO2CH2CH2OSO3H. In this case, the close compound of
Reuscher is:

Appeal 2010-002396
Application 10/583,012

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(Appeal Br. 5-6.)
3. The above compound differs from the elected species of the claims
on appeal in only one position: the moiety designated “(CHR4)” in the above
formula is a -CH2-CH2- moiety in the elected species.
4. Reuscher discloses that “R4 is identical or different and is H or OH”
(Reuscher, col. 2, l. 41).
Principles of Law
“[A] prior art compound may suggest its homologs because homologs
often have similar properties and therefore chemists of ordinary skill would
ordinarily contemplate making them to try to obtain compounds with
improved properties.” In re Deuel, 51 F.3d 1552, 1558 (Fed. Cir. 1995).
“In patent prosecution, the examiner is entitled to reject application
claims as anticipated by a prior art patent without conducting an inquiry into
whether or not that patent is enabled. . . . The applicant, however, can then
overcome that rejection by proving that the relevant disclosures of the prior
art patent are not enabled.” Amgen, Inc. v. Hoechst Marion Roussel, Inc.,
314 F.3d 1313, 1355 (Fed. Cir. 2003). Thus, “a presumption arises that both
the claimed and unclaimed disclosures in a prior art patent are enabled” (id.)
Analysis
Appellants have elected the following compound as the elected species
of the claims:

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(Appeal Br. 4-5.) According to Appellants, Reuscher’s genus of compounds
does not include the elected species, although it suggests a closely related
species having the structure:

where R4 is H or OH (FFs 2, 4) (see Appeal Br. 5-6).
Thus, the elected species differs from the compound suggested by
Reuscher (where R4 is H) only by having -CH2-CH2-, rather than -CH2-,
separating the two nitrogen atoms in the spacer that links the heterocyclic
ring to the cyclodextrin moiety. Given that the two compounds differ only by
having an ethylene rather than methylene group in a single position, we agree
with the Examiner that Reuscher’s disclosure would have suggested the
compound of the instantly elected species.
Appellants argue that “[t]here is no overlap of the generically defined
compounds … of Reuscher with the present elected specie, as -CHR4- is non-
equivalent to present ethylene” (Appeal Br. 6).
This argument is not persuasive. Although the elected species may not
be within the scope of the generically defined compounds of Reuscher, a
“‘reference must be considered not only for what it expressly teaches, but
also for what it fairly suggests.’” In re Baird, 16 F.3d 380, 383 (Fed. Cir.
1994) (quoting In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979)). The
compound above that is suggested by Reuscher would have made obvious the
elected species because they are adjacent homlogs and would have been
expected to have similar properties. See Deuel, 51 F.3d at 1558.
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Appellants further argue that “[w]hile Reuscher generically describes a
number of linkage groups to the polysaccharide including amino, the
processes described in this reference (col. 4, line 32 onwards) are silent about
amino-derivatives. Reuscher is non-enabling for the generic disclosure
where his R3 is NH or NR7.” (Appeal Br. 6). Appellants argue that “amino
derivatives of cyclodextrins are not known from the literature” and Reuscher
does not enable a skilled worker to prepare them (id.).
This argument is not persuasive. The Reuscher disclosure is presumed
to be enabling, Amgen, 314 F.3d at 1355, and Appellants have provided no
evidence to show that it is not. Appellants therefore have not met their
burden of rebutting the presumption of enablement of the Reuscher reference.
Appellants also argue the claims 4 and 5 would not have been obvious
based on Reuscher (Appeal Br. 7) but provide no reasoning to support the
argument. Appellants therefore have not provided any basis on which to
conclude that claims 4 and 5 are separately patentable from claim 1. Finally,
Appellants argue that “claim 16 cannot be obvious” because the
“polysaccharide precursors of formula (7) of claim 16 are not at all disclosed
by Reuscher” (Appeal Br. 7). As discussed above, however, Reuscher “must
be considered not only for what it expressly teaches, but also for what it
fairly suggests.” Baird, 16 F.3d at 383. Appellants have provided no
reasoned basis for concluding that Reuscher would not have made obvious
the compounds of claim 16, even if it does not expressly disclose them.
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Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
elected species of the claims on appeal would have been obvious based on
Reuscher.
SUMMARY
We affirm the rejection of claims 1-5, 7, 10, and 16 under 35 U.S.C.
§ 103(a).
TIME PERIOD FOR RESPONSE
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

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