Ex Parte HomestadDownload PDFPatent Trial and Appeal BoardOct 9, 201412621571 (P.T.A.B. Oct. 9, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte OLE MAGNE HOMESTAD ____________ Appeal 2014-004410 Application 12/621,571 Technology Center 1600 ____________ Before DONALD E. ADAMS, ERIC B. GRIMES, and JEFFREY N. FREDMAN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal2 under 35 U.S.C. § 134 involves claims 1–4 (App. Br. 3). Examiner entered rejection under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The Real Party in Interest is GE Healthcare, Inc. a part of General Electric (“GE”) (App. Br. 3). 2 This Appeal is related to Appeal 2012-001717, Application 12/621,571 (see Br. 5 (“[i]n the . . . Patent Trial and Appeal Board Decision dated November 20, 2012”); Cf. Br. 3 (“There are no other appeals or interferences related to the instant appeal”)). Appeal 2014-004410 Application 12/621,571 2 STATEMENT OF THE CASE The claims are directed to a process for the dimerization of 5- acetamido-N,N’-bis(2,3-dihydroxypropyl)-2,4,6-triiodo-isophthalamide (Compound A). Claim 1 is representative and is reproduced in the Claims Appendix of Appellant’s Brief. Claims 1–4 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Homestad,3 Malthe-Sørenssen,4 and Cervenka.5 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion that the combination of Homestad, Malthe-Sørenssen, and Cervenka suggests a process for the dimerization of Compound A, wherein the pH is varied throughout the dimerization having a higher value at the start of the dimerization than at the end thereof? FACTUAL FINDINGS (FF) FF 1. Homestad suggest “a process for the preparation of . . . Compound A in which, after the dimerization step, unreacted Compound A is precipitated from the reaction mixture and recovered for re-use” (Homestad, col. 4, ll. 33–36) (emphasis added). FF 2. Homestad suggests that the Precipitation of Compound A from a non-aqueous reaction mixture can be effected after addition of water . . . . If water is present in the reaction mixture, the amount of water added for precipitation can be reduced accordingly. An alcoholic co-solvent . . . may additionally be used . . . . In some instances, traces of undissolved material remain after the 3 Homestad, US 6,974,882 B2, issued Dec. 13, 2005. 4 Malthe-Sørenssen et al., US 6,232,499 B1, issued May 15, 2001. 5 Cervenka et al., US 2009/0253935 A1, published Oct. 8, 2009. Appeal 2014-004410 Application 12/621,571 3 addition of water and alcohol and these can be dissolved by addition of alkali, e.g. sodium hydroxide. The pH of the solution is then adjusted to about 10–11 by addition of an acid . . . to provoke precipitation of unreacted Compound A and if necessary the temperature can be adjusted to 15–40 C., preferably 18–30 C. The solution is optionally seeded with crystals of Compound A to initiate the precipitation of Compound A, while the iodixanol formed stays in solution. (Id. at 47–65) (emphasis added.) ANALYSIS Appellant’s claimed dimerization process requires, inter alia, that “the pH is varied throughout the dimeri[z]ation having a higher value at the start of the dimeri[z]ation than at the end thereof” (see Appellant’s independent claim 1). Examiner does not dispute Appellant’s contention that Malthe- Sørenssen “does not provide any teaching or suggestion as to the varying of the pH throughout the dimerization, whereby the pH has a higher value at the start of the dimeri[z]ation than at the end thereof” (see Final Rej. 10). Examiner also does not dispute Appellant’s contention that “Cervenka does not make any reference to pH value and thus does not consider pH to be an important parameter in its process” (Br. 6). Instead, Examiner finds that “Homestad teaches varying pH during the dimerization process, see Homestad, col. 4, ll. 58-62 ([t]he pH of the solution is then adjusted to about 10-11 by addition of an acid, e.g. hydrochloric acid, to provoke precipitation of unreacted Compound A . . .)” (Ans. 18 (emphasis and alteration original)). We are not persuaded. Notwithstanding Examiner’s assertion to the contrary, Homestad suggests the dimerization of Compound A and then, after the dimerization step, unreacted Compound A is precipitated from the reaction mixture (FF 1–2; see also Br. 4 (“all reference in Homestad to pH values relates to the Appeal 2014-004410 Application 12/621,571 4 second step of the procedure, i.e., the precipitation step and not the dimerization step”)). In sum, Examiner failed to establish that the combination of Homestad, Malthe-Sørenssen, and Cervenka suggests a process for the dimerization of Compound A, wherein the pH is varied throughout the dimerization having a higher value at the start of the dimerization than at the end thereof, as is required by Appellant’s claimed invention. CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner fails to support a conclusion that the combination of Homestad, Malthe-Sørenssen, and Cervenka suggests a process for the dimerization of Compound A, wherein the pH is varied throughout the dimerization having a higher value at the start of the dimerization than at the end thereof. The rejection of claims 1–4 under 35 U.S.C. § 103(a) as unpatentable over the combination of Homestad, Malthe-Sørenssen, and Cervenka is reversed. REVERSED cdc Copy with citationCopy as parenthetical citation