Ex Parte Hu

Board of Patent Appeals and Interferences

Jun 27, 2008

10655471 (B.P.A.I. Jun. 27, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BAIHUA HU
____________

Appeal 2008-1358
Application 10/655,471
Technology Center 1600
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Decided: June 27, 2008
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Before TONI R. SCHEINER, DEMETRA J. MILLS, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of claims 1, 2, 25-
28, and 29-31. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

Appeal 2008-1358
Application 10/655,471

STATEMENT OF THE CASE
The claims are directed to chemical compounds. Claims 1, 2, 25-28,
and 29-31 are appealed and rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement (Ans. 3).
We focus our analysis on claim 1, which is representative of the
claimed subject matter. Claim 1 reads as follows:
A compound of Formula I:

wherein:
B is alkyl of 1-4 carbons or alkoxy of 1-4 carbons;
R1 is aryl optionally substituted with R6;
R2 is alkyl of 1-4 carbons, CF3, or aryl substituted with R6;
R3 is H, alkyl of 1-4 carbons, CF3, or aryl substituted with R6;
one of R4, and R5 is hydrogen, halogen, alkyl of 1-4 carbons, CO2R7,
SO2NHR7, CONHR7, CN, NO2, or CF3; and the other is halogen, alkyl of 1-
4 carbons, CO2R7, SO2NHR7, CONHR7, CN, NO2, or CF3;
R6 is hydrogen, halogen, NO2, alkyl of 1-4 carbons, alkoxy of 1-4
carbons, alkylcarbonyloxy of 2-7 carbons, alkylcarbonyl of 2-7 carbons,
CF3, or COOH; and
R7 is hydrogen, alkyl of 1-4 carbons, or alkylaryl where the aryl group
is substituted with R6; or a pharmaceutically acceptable salt thereof.

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Appeal 2008-1358
Application 10/655,471

ISSUE ON APPEAL
Independent claim 1 is directed to a compound of formula I having B,
R1, R2, R3, R4, and R5 variables. The issue in this appeal involves the
variable R3 in formula I.
R3 is defined in appealed claim 1 as “H, alkyl of 1-4 carbons, CF3, or
aryl substituted R6.” In the “original”1 claim 1 filed with the Specification,
R3 was defined as “alkyl of 1-4 carbons, CF3, or Het substituted with R6, or
R2 and R3 are combined to form a cycloalkyl or heterocyclic ring optionally
substituted with alkyl, benzyl, or acyl.” During prosecution, R3 was
narrowed to the definition now recited in appealed claim 1 and “H”
(hydrogen) was added to it (see Amendment dated stamped Feb. 10, 2005).
The Examiner contends that instant claim 1 does not comply with the
written description requirement of 35 U.S.C. § 112, first paragraph, because
the “definition of R3 has been amended by introducing ‘H’ (hydrogen), for
which there is no support under the structural formula I in the instant
application as originally filed” (Ans. 3).
Appellants acknowledge that the application as filed did not include
hydrogen in the definition of R3 of formula I, but contend that the disclosure
in the Specification and original dependent claims demonstrate possession of
the claimed genus (App. Br. 7).
FINDINGS OF FACT
1. The original application as filed did not include an H in the Markush
group for R3 in either the Specification or in original claim 1 which
represented a genus of compounds (see App. Br. Appendix).

1 “Original” refers to the Specification and claims which were filed on the
application filing date.
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Application 10/655,471

2. However, the Specification describes 11 compounds in which R3 is H
(Spec. 8: 18 and 21:11-17 (Example 1); Spec. 9: 2 and 22: 18-22 (Example
5); Spec. 9: 4 and 23: 9-15 (Example 7); Spec. 9: 5 and 23: 17-23 (Example
8); Spec. 9: 8 and 24: 11-15 (Example 10); Spec. 9: 9 and 24: 17-21
(Example 11); Spec. 9: 12 and 25: 9-12 (Example 13); Spec. 9: 15 and 26: 1-
6 (Example 15); Spec. 9: 18 and 26: 16-23 (Example 17); Spec. 9: 21 and
27: 9-14 (Example 19); Spec. 9: 24 and 28: 1-6 (Example 21); see App. Br.
8-12).
3. The aforementioned 11 compounds were each recited in an original claim
dependent upon original claim 1 (see original claims 3, 7, 9, 10, 12, 13, 15,
17, 19, 21, and 23) (see App. Br. 12; App. Br. Appendix).
4. The claimed and disclosed 11 compounds have substitution patterns for
R1, R2, R4, and R5 that reflect some, but not all the variance found in the
claimed genus (see App. Br. 12; Reply Br. 9).
ANALYSIS
The policy behind the written description requirement is to ensure that
the invention covered by later filed claims was “something [the inventors]
actually invented.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed.
Cir. 1991) (quoting In re Ruschig, 379 F.2d 990, 995-96 (C.C.P.A. 1967)).
“[A]pplicants have some flexibility in the ‘mode selected for
compliance’ with the written description requirement,” but a specification
must “set forth enough detail to allow a person of ordinary skill in the art . . .
to recognize that the inventor invented what is claimed” Rochester, 358 F.3d
at 928. See, for example, Koito Manufacturing Co., Ltd. v. Turn-Key-Tech,
LLC, 381 F.3d 1142, 1154 (Fed. Cir. 2004), where the court explained
(emphasis in original):
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Appeal 2008-1358
Application 10/655,471

Terms need not be used in haec verba, however. Eiselstein v.
Frank, 52 F.3d 1035, 1038 (Fed. Cir. 1995) (“The prior
application need not describe the claimed subject matter in
exactly the same terms as used in the claims . . .”). Instead, we
have explained that the written description requirement can be
satisfied by “words, structures, figures, diagrams, formulas,
etc.” Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572
(Fed.Cir. 1997) (emphasis added).
Further, the patent applicant is accorded similar latitude when
amending the claims. As the court explained in All Dental Prodx LLC v.
Advantage Dental Products Inc., 309 F.3d 774, 779 (Fed. Cir. 2002)
(emphasis added):
However, the failure of the specification to specifically mention
a limitation that later appears in the claims is not a fatal one
when one skilled in the art would recognize upon reading the
specification that the new language reflects what the
specification shows has been invented [citations omitted].
In this case, the disclosure in the Specification (FF 3) and in the
original claims2 (FF 4) of compounds in which R3 is hydrogen shows that
the inventors had possession of species that fall within the amended
definition of R3.
Although original claim 1 does not explicitly contain H in its
definition of R3, each of the dependent claims 3, 7, 9, 10, 12, 13, 15, 17, 19,
21, and 23 and are directed to compounds where R3 is hydrogen. The most
reasonable interpretation of the dependent claims, by virtue of 35 U.S.C. §
112, fourth paragraph, is that they further limit all the variable groups

2 Original claims are a part of an application’s written description. See In re
Gardner, 480 F.2d 879, 880 (C.C.P.A. 1973); Union Oil Co. of California v.
Atlantic Richfield Co. 208 F.3d 989, 998 (Fed. Cir. 2000) (“One of this
court's predecessor courts clarified that disclosure in an originally filed claim
satisfies the written description requirement.”)
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Appeal 2008-1358
Application 10/655,471

recited in claim 1, including the R3 substituent. 35 U.S.C. § 112, fourth
paragraph, states:
a claim in dependent form shall contain a reference to a claim
previously set forth and then specify a further limitation of the
subject matter claimed. A claim in dependent form shall be
construed to incorporate by reference all the limitations of the
claim to which it refers.
The structure of the dependent claims is consistent with 35 U.S.C. § 112,
fourth paragraph, in “further limit[ing]” all the variables to a particular
chemical group recited in the formula I genus, with the exception of R3. The
most logical, commonsense explanation is that Appellants invented the
genus of appealed claim 1, including where there is a hydrogen at the R3
position, and intended to originally claim it by adding dependent claims 3, 7,
9, 10, 12, 13, 15, 17, 19, 21, and 23.
The Examiner argues that “[t]he myriad of permutations that are
present within the genus of formula I as instantly recited do not include all
of the permutations possible in addition to the substituents already disclosed
for R3. Therefore, inclusion of ‘H’ in the definition of R3 results in species,
which were not contemplated or made” (Ans. 3).
The Examiner’s position is an overly rigid application of § 112, first
paragraph. As pointed out by Appellants, the claimed and disclosed 11
compounds have substitution patterns for R1, R2, R4, and R5 that reflect the
variance found in the claimed genus (FF 4). We do not agree that it is
necessary for the full spectrum of variable groups to have been described in
combination with the hydrogen for persons of ordinary skill in the art to
have recognized that the inventor actually invented what is claimed. To the
contrary, the pattern of disclosure in the Specification, coupled with the
original dependent claims, conveys with reasonable clarity the genus which
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Appeal 2008-1358
Application 10/655,471

is now claimed. The Examiner has not addressed nor offered an explanation
for the discrepancy between the absence of H from the definition of R3 in
original claim 1 and the recitation of H in this same position in the
dependent claims. Appellants’ explanation is reasonable, persuasive, and
legitimate. See supra Koito, 381 F.3d at 1154.
For the foregoing reasons, the rejection of claims 1, 2, 25-28, and 29-
31 under 35 U.S.C. § 112, first paragraph is

REVERSED

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