Ex Parte Lange et al

Patent Trial and Appeal Board

Jun 11, 2013

11641725 (P.T.A.B. Jun. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/641,725 12/20/2006 Josephus H.M. Lange 01975.0101 9958
22852 7590 06/11/2013
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
YOUNG, SHAWQUIA
ART UNIT PAPER NUMBER
1626
MAIL DATE DELIVERY MODE
06/11/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JOSEPHUS H.M. LANGE, WOUTER I. IWEMA BAKKER,
BERNARD J. VAN VLIET, and MARTINA A.W. VAN DER NEUT
__________

Appeal 2012-000709
Application 11/641,725
Technology Center 1600
__________

Before TONI R. SCHEINER, JEFFREY N. FREDMAN, and
ANNETTE R. REIMERS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a
compound. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 Appellants identify the Real Party in Interest as Solvay
Pharmaceuticals B.V. (App. Br. 3).
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Statement of the Case
“This invention is directed to 4,5-dihydro-(1 H)-pyrazole (pyrazoline)
derivatives as cannabinoid CB1 receptor modulators” (Spec. 1, ll. 29-30).
The Claims
Claims 1-8, 12, and 14 are on appeal. Claims 2-8 have not been
argued separately and therefore stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii). Claim 1 reads as follows:
1. A compound of formula (I):

or a stereoisomer, or an N-oxide thereof, or a pharmacologically
acceptable salt of any of the foregoing,
wherein
- R is chosen from a C2-10 alkyl group, a C4-10 alkenyl group, a C4-10
alkynyl group, a C2-10 -heteroalkyl group, a C5-8-cycloalkyl-C1-5-alkyl
group, and a C5-8-heterocycloalkyl-C1-5-alkyl, wherein each of said
heteroatoms is chosen from N, O and S, and wherein the C2-10 alkyl
group, the C4-10 alkenyl group, the C4-10 alkynyl group, the C2-10 -
heteroalkyl group, the C5-8-cycloalkyl-C1-5-alkyl group, and the C5-8-
heterocycloalkyl-C1-5-alkyl group are each optionally substituted with
1-5 substituents chosen from methyl, ethyl, hydroxy, amino and
fluoro, or R is chosen from an aryl-C1-3-alkyl group and an aryl-C1-3-
heteroalkyl group, wherein the aryl groups are each optionally
substituted with 1-5 substituents Y, which can be the same or
different, and are chosen from C1-3-alkyl or alkoxy, hydroxy, halogen,
trifluoromethyl, trifluoromethylthio, trifluoromethoxy, nitro, amino,
mono- or dialkyl (C1-2)-amino, mono- or dialkyl (C1-2)-amido, (C1-3)-
alkyl sulfonyl, dimethylsulfamido, C1-3-alkoxycarbonyl, carboxyl,
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trifluoromethyl-sulfonyl, cyano, carbamoyl, sulfamoyl, phenyl and
acetyl, or R is a cyclopropyl group which is optionally substituted
with 1-5 substituents chosen from methyl, ethyl, fluoro, a C3-5 linear or
branched alkyl group, a benzyl group, and an aryl group, wherein each
aryl and benzyl group is optionally substituted with 1-5 substituents
Y, wherein Y has the above-mentioned meaning;
- R1 is chosen from a hydrogen atom, a hydroxy group, a C1-3-
alkoxy group, an acetyloxy group, and a propionyloxy group;
- R2 is an aryl group which is optionally substituted with 1-5
substituents Y, wherein Y has the above-mentioned meaning;
- n is chosen from 0 and 1;
- R3 is chosen from a linear C3-10 alkyl group, a branched C5-10
alkyl group, a cyclopropyl, cyclobutyl, cyclopentyl, cycloheptyl or
cyclooctyl group, a C5-10 bicycloalkyl group, a C6-10 tricycloalkyl
group, and a C8-11 tetracycloalkyl group, wherein the linear C3-10 alkyl
group, the branched C5-10 alkyl group, the cyclopropyl, cyclobutyl,
cyclopentyl, cycloheptyl and cyclooctyl group, the C5-10 bicycloalkyl
group, the C6-10 tricycloalkyl group and the C8-11 tetracycloalkyl group
are each optionally substituted with 1-5 substituents chosen from
methyl, ethyl, hydroxy, amino, and fluoro, or R3 is a C3-8 cycloalkyl
group, substituted with an aryl group, wherein the aryl group is
optionally substituted with 1-5 substituents Y, wherein Y has the
above-mentioned meaning, or R3 is chosen from a 2,2,2-trifluoroethyl
group and a 2-fluoroethyl group, or R3 is a cyclohexyl group
substituted with 1-5 substituents chosen from methyl, ethyl, hydroxy,
amino ,and fluoro, or R3 is chosen from a C5-8 heterocycloalkyl group,
a C6-10 bicycloheteroalkyl group, and a C7-10 tricycloheteroalkyl group,
wherein the C5-8 heterocycloalkyl group, the C6-10 bicycloheteroalkyl
group, and the C7-10 tricycloheteroalkyl group are each optionally
substituted with 1-5 substituents chosen from methyl, ethyl, hydroxy,
amino and fluoro, or R3 is chosen from a C3-8 cycloalkyl-C1-3-alkyl
group, a C5-10 bicycloalkyl-C1-3-alkyl group, and a C6-10-tricycloalkyl-
C1-3-alkyl group, wherein the C3-8cycloalkyl- C1-3-alkyl group, the C5-
10 bicycloalkyl-C1-3-alkyl group, and the C6-10-tricycloalkyl- C1-3-alkyl
group are each optionally substituted with 1-5 substituents chosen
from methyl, ethyl, hydroxy, amino and fluoro, or R3 is chosen from a
branched or linear C3-8 heterocycloalkyl- C1-3-alkyl group, a C5-10-
bicycloheteroalkyl-C1-3-alkyl group, and a C6-10tricycloheteroalkyl-C1-
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3-alkyl group, wherein the C3-8 heterocycloalkyl- C1-3-alkyl group, the
C5-10-bicycloheteroalkyl-C1-3-alkyl group, and the C6-10
tricycloheteroalkyl-C1-3-alkyl group are each optionally substituted
with 1-5 substituents chosen from methyl, ethyl, hydroxy, amino and
fluoro, or R3 is an aryl group, optionally substituted with 1-5
substituents Y, wherein Y has the abovementioned meaning, or R3 is
chosen from an aryl- C1-5-alkyl group and a diaryl- C1-5-alkyl group,
wherein at least one phenyl or heteroaromatic ring of the aryl- C1-5-
alkyl group or the diaryl- C1-5-alkyl group is optionally substituted
with 1-5 substituents Y, wherein Y has the above-mentioned meaning,
or R3 is chosen from a linear or branched C4-8 alkenyl and a C4-8
alkynyl group, wherein the linear or branched C4-8 alkenyl or the C4-8
alkynyl group is optionally substituted with 1-3 fluoro atoms, or,
when n is 1, R3 is a branched or linear C2-10 heteroalkyl group,
containing 1-2 heteroatoms chosen from N, O and S;
- R4 is chosen from a hydrogen atom, a C1-4 alkyl group, and a
saturated or unsaturated ring in which R3 and R4 - together with the
nitrogen atom to which they are bonded - form a saturated or
unsaturated ring, a non-aromatic or partly aromatic, and a monocyclic,
bicyclic or tricyclic heterocyclic group having 5 to 11 ring atoms,
wherein at least one heterocyclic group is optionally substituted with
1-5 substituents chosen from aryl, aryl-C1-3-alkyl, diarylmethyl, and
Y, wherein Y has the above-mentioned meaning;
- A is chosen from a carbonyl (C=O), a thiocarbonyl (C=S), and
a sulfonyl (SO2) group with the proviso that when A represents a
thiocarbonyl (C=S) group, n has the value 1, wherein the compound is
a cannabinoid CB1 receptor modulator.
-
The issues
A. The Examiner rejected claims 1-8 under 35 U.S.C. § 103(a) as
obvious over Ozawa2 (Ans. 5-8).

2 Ozawa, CAPLUS Document 106:18543, entered into STN on
Jan. 24, 1987.
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B. The Examiner rejected claims 12 and 14 under 35 U.S.C. § 103(a) as
obvious over Ozawa, Kulkarni,3 Fabacher,4 and Quan5 (Ans. 8-13).
Because both rejections turn on the same issues, and because we rely
on Ozawa for both rejections, we will consider these rejections together.
The Examiner finds that Ozawa teaches “1-carbamoyl-4-
phenylpyrazoline derivatives of the formula

wherein R is an alkyl group; R1 is a halogen or an alkyl group; R2 is
CONHR3, wherein R3 is a branched alkyl or cycloalkyl group” (Ans. 6).
The Examiner finds that “a branched alkyl includes C3, C4, C5, or C6-alkyl
groups and a cycloalkyl group includes C3, C4, C5, or C6-cycloalkyl groups.
The prior art specifically teaches species wherein R3 is isopropyl, t-butyl
and cyclohexyl but it would be obvious to prepare other branched alkyl
groups and cycloalkyl groups because R3 includes any branched alkyl or
cycloalkyl group” (Ans. 7). The Examiner finds it obvious “to prepare
adjacent homologs based on the teachings of the preferred embodiments in
the prior art” (Ans. 8).

3 Kulkarni et al., PESTICIDES AS INDUCERS OF HEPATIC
DRUG-METABOLIZING ENZYMES-II. GLUTATHIONE S-
TRANSFERASES, 11 GEN. PHARMAC. 437-441 (1980).
4 Fabacher et al., PESTICIDES AS INDUCERS OF HEPATIC
DRUG-METABOLIZING ENZYMES-I. MIXED FUNCTION
OXIDASE ACTIVITY, 11 GEN. PHARMAC. 429-435 (1980).
5 Quan et al., US 5,939,418, issued Aug. 17, 1999.
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The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Ozawa renders claims 1, 12,
and 14 obvious?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
1. The Specification teaches that the “term ‘alkyl’ refers to
straight or branched saturated hydrocarbon radicals” (Spec. 10, l. 21).
2. Claim 1 includes compounds of formula I where R is a C2-10
alkyl, R1 is hydrogen, R2 is a phenyl group substituted with a halogen, n is 1,
R3 is selected from either a branched C5-10 alkyl group or the cycloalkyls of
cyclopropyl, cyclobutyl, cyclopentyl, cycloheptyl or cyclooctyl, R4 is a
hydrogen, A is a carbonyl (see Claim 1).
3. An exemplary structure of formula I of claim 1 is reproduced
below, where R is a methylethyl alkyl (see FF 1), R1 is hydrogen, where R2
is phenyl group substituted with Cl, n is 1, R3 is dimethylpropyl alkyl, R4 is
a hydrogen, and A is a carbonyl:

This structure is 4-(4-chlorophenyl)-N-(1, 1-dimethylpropyl)-4, 5-dihydro-3-
(1-methylethyl)-1H pyrazole-1-carboxamide.
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4. Ozawa teaches that a compound of formula I

where Ozawa teaches that “[I; R = alkyl; Rl = halo, alkyl; R2 = CONHR3
(R3 = branched alkyl, cycloalkyl)]” (Ozawa, abstract).
5. An exemplary structure of formula I of Ozawa, is reproduced
below, where R is a methylethyl alkyl (see FF 1), R1 is Cl, R2 is CONHR3
where R3 is a dimethylethyl group:

This structure is identified by the Examiner as 4-(4-chlorophenyl)-N-(1, 1-
dimethylethyl)-4, 5-dihydro-3-(1-methylethyl)-1H pyrazole-1-carboxamide
(see Ans. 6). This structure is expressly described by the Ozawa abstract
and is given the CA registry number 105956-25-0.
Principles of Law
This court, in reconsidering this case in banc, reaffirms that
structural similarity between claimed and prior art subject
matter, proved by combining references or otherwise, where
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the prior art gives reason or motivation to make the claimed
compositions, creates a prima facie case of obviousness, and
that the burden (and opportunity) then falls on an applicant
to rebut that prima facie case.

In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
Ozawa teaches a genus of compounds where virtually all members of
the genus fall within the scope of claim 1. We note that the structure
identified by the Examiner as 4-(4-chlorophenyl)-N-(1, 1-dimethylethyl)-4,
5-dihydro-3-(1-methylethyl)-1H pyrazole-1-carboxamide, expressly
disclosed in Ozawa and shown on the second page of the Ozawa abstract,
differs from claim 1 solely in an R3 which is a branched C4 alkyl group, one
carbon shorter than the branched C5-10 alkyl groups required by the R3 of
claim 1.
Even Ozawa’s generic formula I is more closely related to instant
claim 1 than simple structural similarity, more closely resembling a
subgenus almost entirely encompassed within the scope of instant claim 1.
Ozawa’s disclosed structure permits three substituent choices, R, R1 and R2
(Ozawa abstract).
For R, Ozawa teaches that R is an alkyl group (Ozawa abstract). For
the equivalent position in claim 1, also denoted as “R” in claim 1, the
substituents may include a C2-10 alkyl group, along with a large number of
other alternatives. Ozawa’s R group differs from claim 1 solely by
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encompassing either a methyl or C11 or greater alkyl group, as well as
encompassing the claim 1 “R” group of a C2-10 alkyl.
For R1, Ozawa teaches that R1 is either a halogen or an alkyl group
(Ozawa abstract). For the equivalent positions in claim 1, denoted as “R1”,
“R2”, and “Y”, where the “R1” is chosen as hydrogen and the “R2” is chosen
as a phenyl group (a type of aryl group) substituted with a “Y” selected as
either a halogen or C1-3 alkyl, Ozawa’s R1 group differs only in
encompassing C4 or greater alkyl groups, as well as encompassing the claim
1 “Y” groups of halogen or C1-3 alkyl.
For R2, Ozawa teaches that R2 is CONHR3 where R3 is either a
branched alkyl or a cycloalkyl (Ozawa abstract). For the equivalent position
in claim 1, denoted as “A”, “R4”, “n”, and “R3”, where “A” is chosen as
C=O, where “R4” is chosen as hydrogen, where “n” is chosen as 1, and
where “R3” is chosen as either a branched C5-10 alkyl group, a cyclopropyl,
cyclobutyl, cyclopentyl, cycloheptyl or cyclooctyl group, Ozawa’s R3 group
differs only in encompassing C1-4 and C11 or greater branched alkyl groups
and cycloalkyls where the number of carbon atoms in the ring is either six or
greater than 8, as well as encompassing the claim 1 “R3” groups of a
branched C5-10 alkyl group, a cyclopropyl, cyclobutyl, cyclopentyl,
cycloheptyl or cyclooctyl group.
Thus, almost all of Ozawa’s claimed structures fall directly within the
scope of claim 1. Those structures in Ozawa which differ from claim 1 are
adjacent homologs which differ solely in the number of carbons in an alkyl
or cycloalkyl group, as exemplified by the compounds shown in FF 3 and FF
5 which differ by a single carbon atom in the “R3” group. We agree with the
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Examiner that “it would have been prima facie obvious to one having
ordinary skill in the art at the time the invention was made to prepare
adjacent homologs based on the teachings of the preferred embodiments in
the prior art” (Ans. 8). See Dillon, 919 F.2d at 696 (“[T]he cases establish
that if an examiner considers that he has found prior art close enough to the
claimed invention to give one skilled in the relevant chemical art the
motivation to make close relatives (homologs, analogs, isomers, etc.) of the
prior art compound(s), then there arises what has been called a presumption
of obviousness or a prima facie case of obviousness . . . The cases of Hass
and Henze established the rule that, unless an applicant showed that the prior
art compound lacked the property or advantage asserted for the claimed
compound, the presumption of unpatentability was not overcome”).
Appellants contend that “to make a Section 103 rejection, the
reference must qualify as ‘analogous’ prior art” (App. Br. 13). Appellants
contend that “there is no reason why one of ordinary skill in the art would
consider the compounds disclosed in Ozawa, which are useful as
insecticides, pertinent in developing compounds that are cannabinoid CB1
receptor modulators” (App. Br. 14).
We do not agree that the issue is one of analogous art where the prior
art compounds must have analogous properties to those claimed, but rather
one of structural obviousness. Indeed, Dillon expressly overrules
Appellants’ line of reasoning, stating that “it is not necessary in order to
establish a prima facie case of obviousness . . . that there be a suggestion in
or expectation from the prior art that the claimed compound or composition
will have the same or a similar utility as one newly discovered by applicant.
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To the extent that Wright suggests or holds to the contrary, it is hereby
overruled.” Dillon, 919 F.2d at 693.
Appellants contend that the “Examiner, however, has not pointed to
any disclosure in the Ozawa reference itself that teaches that R3 in Ozawa's
pyrazoline compounds can be ‘any branched alkyl or cycloalkyl group’”
(App. Br. 15).
We are not persuaded. Ozawa teaches that “R2 = CONHR3 (R3 =
branched alkyl, cycloalkyl)” (Ozawa abstract). As discussed above,
Ozawa’s R3 of branched alkyl or cycloalkyl represents the exact same
structural position as Appellants “R3” in claim 1.
Appellants contend that “there is no assurance that the Abstract is an
accurate summary of the teachings of Ozawa” (App. Br. 15-16).
We are not persuaded. While we would also prefer a translation of the
Japanese patent, in Antor, the Court held that as “long as an examiner makes
a proper prima facie case of anticipation by giving adequate notice under
§ 132, the burden shifts to the applicant to submit rebuttal evidence of
nonenablement.” In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir.
2012). Appellants present no evidence that suggests that the abstract does
not accurately represent the teachings of Ozawa or that the disclosure in
Ozawa would not have been enabling to the ordinary artisan.
Further, whether a document constitutes a printed publication under
§ 102 is a question of law based upon the underlying facts of each particular
case. Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1332-33 (Fed.
Cir. 2009). Here, to qualify as a printed publication, the Ozawa abstract
must have been disseminated or otherwise made accessible to persons
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interested and ordinarily skilled in the subject matter prior to the critical
date. See Kyocera Wireless Corp. v. Int'l Trade Comm’n, 545 F.3d 1340,
1350 (Fed. Cir. 2008); In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986)
(explaining that public accessibility is the “touchstone in determining
whether a reference constitutes a ‘printed publication’ bar under 35 U.S.C.
§ 102(b)”).
The Ozawa abstract states “Entered STN: 24 Jan 1987” on the second
line of the document. This teaching reasonably supports the finding that this
abstract was available as of 1987, about 18 years prior to the critical filing
date of the instant application, and that the abstract is itself prior art, along
with the Japanese patent document upon which it is based.
Appellants contend that the
present case is analogous to Takeda in that: 1) the reference
cited by the Office, Ozawa, is characterized as disclosing
compounds that are allegedly structurally similar, but
nonetheless structurally distinct from the compounds of the
claimed invention; 2) the Examiner failed to point to any
reason why one of ordinary skill in the art would have
selected one particular species, e.g., 4-(4-chlorophenyl)-N-
(1, 1-dimethylethyl)-4, 5-dihydro-3-(1-methylethyl)-1 H
pyrazole-1-carboxamide . . . identified by the Examiner on
page 5 of the Office Action, as a lead compound

(App. Br. 18-19).
We are not persuaded. Takeda involves the situation where none of
the species in the prior art genus fell within the scope of the claim, since
“[p]ioglitazone differs from compound b in two respects, and one would
have to both homologate the methyl group of compound b and move the
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resulting ethyl group to the 5-position on the pyridyl ring in order to obtain
pioglitazone.” Takeda, 492 F.3d 1350, 1360 (Fed. Cir. 2007).
In the instant case, the vast majority of Ozawa’s compounds literally
fall within the scope of Appellants’ claim 1 genus. For those compounds of
Ozawa which might fall outside of the genus of Appellants claim 1, the only
difference is the number of carbons on the alkyl chains or cycloalkyl rings.
Thus, a random selection of a lead compound from Ozawa would most
likely identify a compound which anticipates claim 1, with the only other
option being a compound differing from claim 1 solely in the number of
carbons on the alkyl chains or cycloalkyl rings.
The instant case also differs from Takeda in that there was substantial
evidence presented that “the court found that pioglitazone exhibited
unexpectedly superior properties over the prior art compound b.” Takeda,
492 F.3d at 1361. There is no such evidence of unexpected results, or
indeed of any results, present in the instant application. This is consistent
with Wilder, where the court found that ““one who claims a compound, per
se, which is structurally similar to a prior art compound must rebut the
presumed expectation that the structurally similar compounds have similar
properties.” In re Wilder, 563 F.2d 457, 460 (CCPA 1977). Here, some of
the structurally similar compounds in the prior art are, in fact, structurally
identical to the compounds within the genus being claimed.
Appellants contend that “the recitation regarding a cannabinoid CB1
receptor modulator in claim 1 further defines the claimed compound and
should be given patentable weight” (Reply Br. 2).
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While we agree that the functional limitation should be given
patentable weight, Ozawa renders obvious the structures of claim 1 as
discussed above. “It is well settled that the recitation of a new intended use
for an old product does not make a claim to that old product patentable.” In
re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)
[W]here the Patent Office has reason to believe that a
functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the
authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the
characteristic relied on. ... Whether the rejection is based on
“inherency” under 35 U.S.C. § 102, on “prima facie
obviousness” under 35 U.S.C. § 103, jointly or alternatively,
the burden of proof is the same, and its fairness is evidenced
by the PTO's inability to manufacture products or to obtain
and compare prior art products.

In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977).
In the instant case, Ozawa’s compounds render obvious the
compounds of instant claim 1. Since Papesch teaches that “[f]rom the
standpoint of patent law, a compound and all of its properties are
inseparable; they are one and the same thing” In re Papesch, 315 F.2d 381,
391 (CCPA 1963), the compounds of Ozawa are reasonably interpreted as
inherently comprising the cannabinoid CB1 receptor modulator activity in
the absence of evidence to the contrary, consistent with Best. Appellants
have provided no such evidence to show that any compound within the
genus taught by Ozawa lacks cannabinoid CB1 receptor modulator activity.
Also see In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979) (Appellant is,
“in effect, arguing that a structure suggested by the prior art, and, hence,
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potentially in the possession of the public, is patentable to [Appellant]
because it also possesses an Inherent, but hitherto unknown, function which
they claim to have discovered. This is not the law. A patent on such a
structure would remove from the public that which is in the public domain
by virtue of its inclusion in, or obviousness from, the prior art.”)
Appellants rely upon similar contentions for claims 12 and 14,
differing only in the issue of combining the secondary references.
In affirming a multiple reference rejection under 35 U.S.C. § 103, the
Board may rely on fewer than all of the references relied on by the Examiner
in an obviousness rationale without designating it as a new ground of
rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1961). Claim 12 imposes
no structural requirements that differ from claim 1 whatsoever, and claim 14
simply requires inclusion of a “pharmaceutically acceptable carrier” which
may be satisfied where water is the diluent. Since we have already found
that Ozawa teaches and renders obvious compounds within the genus of
claim 1, Ozawa also renders obvious claims 12 and 14.
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Ozawa renders claims 1, 12, and 14 obvious.
SUMMARY
In summary, we affirm the rejection of claims 1-8 under 35 U.S.C.
§ 103(a) as obvious over Ozawa.
We affirm the rejection of claims 12 and 14 under 35 U.S.C.
§ 103(a) as obvious over Ozawa, Kulkarni, Fabacher, and Quan.

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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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