Ex parte Kukla et al.

Board of Patent Appeals and Interferences

Jun 9, 2000

08304951 (B.P.A.I. Jun. 9, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL J. KUKLA
HENRY J. BRESLIN, ALFONS H.M. RAEYMAEKERS,
JOSEPHUS L.H. VAN GELDER,
and PAUL A.J. JANSSEN
__________
Appeal No. 1997-1826
Application 08/304,951
__________
ON BRIEF
__________
Before PAK, WARREN, and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 14, 16-18, 20, 22, 24,
26-28 and 33-34. Claims 19, 21, 23, 25, 29-31 and 35, the
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Application No. 08/304,951
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remaining claims in this application, were amended subsequent
to the final rejection and have been allowed by the examiner
(see the amendment dated Aug. 21, 1995, Paper No. 8; the
Advisory Action dated Sept. 11, 1995, Paper No. 9; and the
Brief, page 2).
According to appellants, the invention is directed to
intermediates of a specified formula useful in the synthesis
of certain tetrahydroimidazo[1,4]benzodiazepin-2-(thi)ones
that have anti-retroviral properties (Brief, pages 2-3).
Appellants state that the appealed claims stand or fall
together (Brief, page 3). In accordance with this statement
and the provisions of 37 CFR
§ 1.192(c)(7)(1995), we select claim 14 from the group of
claims and decide this appeal as to the ground of rejection on
the basis of this claim alone. A copy of illustrative claim
14 is reproduced and attached as an Appendix to this decision.
The examiner has relied upon the following reference as
evidence of obviousness:
Carabateas 3,384,635 May 21, 1968
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Application No. 08/304,951
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The appealed claims stand rejected under 35 U.S.C. § 103
as unpatentable over Carabateas (Answer, page 2). We affirm
this rejection for reasons which follow.
OPINION
The compounds specified in claim 14 on appeal contain an
unsubstituted amino substituent at the 9-position (see formula
II-H). The examiner finds that Carabateas discloses compounds
which are generic to the compounds claimed by appellants
(Answer, page 2, citing Carabateas, col. 1, l. 45+).
Appellants do not contest this finding (Answer, page 3; Brief,
page 5; Reply Brief, page 1). The examiner finds that
Carabateas discloses several examples of specific compounds
with an “amino-type group” on the benzene ring, such as an
alkylamino substituent (Answer, page 2, citing Carabateas,
col. 8, Table C, compounds 7J, 7K, and 7L). Appellants do not
contest this finding regarding the alkylamino substituents
(Brief, sentence bridging pages 5-6).
The examiner finds that loweralkylamino substituents are
considered to be equivalent to primary amino substituents on
the benzene ring by Carabateas (Answer, page 2, citing
Carabateas, col. 1, ll. 63-65). In view of these findings,
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Application No. 08/304,951
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the examiner concludes that Carabateas as a whole fairly
suggests the compounds recited in claim 14 on appeal for his
disclosed utility as antagonists of analgesic agents (Answer,
paragraph bridging pages 2-3, citing Carabateas, col. 2, ll.
1-3).
Appellants argue that Carabateas fails to disclose any
specific compounds that have primary amino substituents
anywhere on the benzene ring (Brief, pages 5-6). Furthermore,
appellants argue that the alkylamino substituents disclosed by
Carabateas are not in the 9-position (id.). Appellants submit
that the Carabateas disclosure of “amino” along with eleven
other substituents, taught for any of the 6, 7, 8, or 9-
positions, does not teach or suggest appellants’ specific
selection of primary amino at the 9-position (id.). Finally,
appellants argue that there is no motivation from Carabateas
to insert a primary amino group at the 9-position unlike
appellants’ compounds which must have a primary amino group at
the 9-position to be useful as an intermediate in the
preparation of the TIBO compounds of Formula (I)(Brief, pages
7-9).
Appeal No. 1997-1826
Application No. 08/304,951
16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994).1
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The examiner concedes that not every disclosure of a
generic formula in a prior art reference that encompasses the
claimed compounds is sufficient to render the claimed species
compounds obvious, citing In re Baird (Answer, page 4). 1
However, as noted by the examiner on pages 2-4 of the Answer,
Carabateas discloses the same basic ring structure as recited
in claim 14 on appeal and the claimed compounds vary only by a
single substituent on the benzene ring of this basic
structure. Carabateas further teaches that various low
molecular weight substituents such as halogen, lower-
alkylamino and amino substituents are relatively equivalent
for purposes of his invention, and exemplifies specific
compounds where the 8-position is substituted by alkylamino
and the 9-position is substituted by halogen (see Carabateas,
col. 1, l. 45-col. 2, l.3; Table C in col. 8, compounds 7J,
7K, 7L, 7M and 7N). Additionally, the reference specifically
teaches how to prepare the unsubstituted amino substituent on
the benzene ring (see Carabateas, col. 3, ll. 24-32). We
agree with the examiner that the compounds recited in claim 14
on appeal would have been fairly suggested by the disclosure
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Application No. 08/304,951
Although no examples in Carabateas are directed to2
primary amino substituents, the reference specifically teaches
the preparation of compounds with a primary amino substituent.
See col. 3, ll. 24-32.
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and teachings of Carabateas as a whole. See In re Burckel,
592 F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA 1979)(“[A]
reference must be considered not only for what it expressly
teaches, but also for what it fairly suggests.”).
Appellants’ argument that Carabateas fails to
specifically disclose any compounds with primary amino
substituents in any of the positions of the benzene ring is
technically correct but not persuasive (Brief, pages 5-6;2
Reply Brief, page 1). “Examples in a reference are merely
that, exemplary of the broader disclosure, all of which is
available for what it clearly teaches.” In re Widmer, 353
F.2d 752, 757, 147 USPQ 518, 523 (CCPA 1965). See also In re
Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA
1976)(“The fact that neither of the references expressly
discloses asymmetric dialkyl moieties is not controlling; the
question under 35 USC 103 is not merely what the references
expressly teach, but what they would have suggested to one of
ordinary skill in the art at the time the invention was
Appeal No. 1997-1826
Application No. 08/304,951
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made.”). The reference, as a whole, clearly teaches
unsubstituted amino substituents, the examples show equivalent
substituents in the 9-position, and therefore 9-amino
tetrahydro-1,4-benzodiazepines would have been well within the
ordinary skill in the art at the time of appellants’
invention.
Appellants’ similar argument that Carabateas does not
disclose any examples where there is amino substitution at the
9-position of the benzene ring is also not persuasive (Brief,
pages 5-6). As discussed above, a reference must be
considered as a whole, not just for the teachings of the
examples. See Widmer, supra. Furthermore, Carabateas does
disclose substituents at the 9-position of the benzene ring
that are taught as equivalents to the amino group (e.g.,
halogen substituents, see col. 1, ll. 60-64, and Table C in
col. 8, compounds 7M and 7N). Accordingly,
1,4-benzodiazepine derivatives with a 9-amino substituent
would have been well within the ordinary skill in the art in
view of the disclosure and teachings of Carabateas.
Appellants’ argument that Carabateas does not teach or
suggest appellants’ utility and thus there is no motivation
Appeal No. 1997-1826
Application No. 08/304,951
97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir.3
1996).
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from the reference to insert a primary amino group at the 9-
position of the benzene ring is not well taken (Brief, pages
7-9; Reply Brief, pages 1-2). As stated by our reviewing
court in In re Kemps3
[a]lthough the motivation to combine here differs
from that of the applicant, the motivation in the
prior art to combine the references does not have to
be identical to that of the applicant to establish
obviousness. In re Dillon, 919 F.2d 688, 693, 16
U.S.P.Q.2D 1897, 1901 (Fed. Cir. 1990)(in banc).
Accordingly, although Carabateas does not disclose any
motivation or suggestion to provide a primary amino
substituent at the 9-position of the benzene ring in order for
the compounds to be useful as intermediates in the preparation
of appellants’ TIBO compounds, Carabateas does provide a
motivation or suggestion to one of ordinary skill in the
analgesic art that 9-primary amino 1,4-benzodiazepine
derivatives would have been useful as antagonists of analgesic
agents. This is all that is required to establish a prima
facie case of obviousness. See Kemps, supra.
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Application No. 08/304,951
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For the foregoing reasons, we determine that the examiner
has established a prima facie case of obviousness in view of
the reference evidence. Based on the totality of the record,
giving due consideration of appellants’ arguments, we
determine that the preponderance of evidence weighs in favor
of obviousness. Accordingly, the examiner’s rejection of the
claims on appeal under 35 U.S.C. § 103 as unpatentable over
Carabateas is affirmed.
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Application No. 08/304,951
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Chung K. Pak )
Administrative Patent Judge )
)
)
)
Charles F. Warren ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Thomas A. Waltz )
Administrative Patent Judge )
tdl
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Audley A. Ciamporcero, Jr.
JOHNSON & JOHNSON
One Johnson & Johnson Plaza
New Brunswick, NJ 08933-7003
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Application No. 08/304,951
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APPENDIX
14. A compound having the formula:
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