Ex Parte LUI et alDownload PDFPatent Trial and Appeal BoardAug 8, 201613591431 (P.T.A.B. Aug. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/591,431 08/22/2012 84331 7590 MMWVIP,LLC 10 N JEFFERSON ST SUITE 100 FREDERICK, MD 21701 08/10/2016 FIRST NAMED INVENTOR Norbert LUI 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2903925-230001 7640 EXAMINER CHANDRAKUMAR, NIZAL S ART UNIT PAPER NUMBER 1625 NOTIFICATION DATE DELIVERY MODE 08/10/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): docketing@mmwvlaw.com cgmoore@mmwvlaw.com dwoodward@mmwvlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NORBERT LUI and JENS-DIETMAR HEINRICH Appeal2014-003236 Application 13/591,431 Technology Center 1600 Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and RYAN H. FLAX, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL 1 This appeal under 35 U.S.C. § 134(a) involves claims 1-5 (Br. 3). Examiner entered a rejection under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Appellants identify the Real Party in Interest as "Bayer CropScience AG" (Br. 3). Appeal2014-003236 Application 13/591,431 STATEMENT OF THE CASE Appellants' claims 1 and 4 are representative and reproduced below: 1. A compound of formula (Ila) in which substituent R2 is selected from the group consisting of alkyl, aryl, and arylalkyl. 4. A compound of formula (IIb) {lib) in which substitutent Z is selected from the group consisting of alkali metals and alkaline earth metals. Claims 1-5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Campbell.2 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? 2 Alexander C. Campbell, et al., Synthesis of (E)- and (Z)-Pulvinones, Vol. 1, J. Chem. Soc., Perkin Transactions 1, 1567-76 (1985). 2 Appeal2014-003236 Application 13/591,431 FACTUAL FINDINGS (FF) FF 1. Campbell discloses the synthesis of "(Z)-S-Benzylidene-4- hydroxyfuran-2(5H)-one," wherein the "[t]reatment of ethyl potassium malonate [] with ethyl bromoacetate in boiling ethanol afforded ethoxycarbonylmethyl ethyl malonate [],which reacted with potassium t-butoxide int-butyl alcohol to give [] the ethoxycarbonyl-4-hydroxy-furan- 2(5H)-one potassium salt (40)," intermediate, of the following formula: Rf.$. CO Et ~ .,.... .... '." ........... ~,\. ( ~ ""'"'"""" (o_.~o that is further reacted with a variety of reagents to produce (Z)-S- benzylidene-4-hydroxyfuran-2( 5H)-one (Campbell 1570-1571; see also id. at 1571: Scheme 4; see Ans. 5 (Campbell teaches "compound [n]umber (40)")). FF 2. Examiner finds that Campbell's compound 40 differs from Appellants' compound of formula (Ila), because it is a potassium salt, instead of a sodium salt as required by Appellants' compound of formula (Ila) (see Ans. 5; cf FF 1; Appellants' claim 1). FF 3. Examiner finds that sodium and potassium are "in the same Group I in the Periodic Table of Elements" and "[i]t is well recognized in the art that the periodic table ... is a tabular arrangement of the chemical elements, organized on the basis of the recurring properties of the elements and the compounds of the elements" (Ans. 5). FF 4. Examiner finds that Campbell's compound 40 differs from Appellants' compound of formula (IIb ), because it possess an ethoxycarbonyl group instead of a methoxycarbonyl group as required by 3 Appeal2014-003236 Application 13/591,431 Appellants' compound of formula (llb) (see Ans. 5; cf FF 1; Appellants' claim 4). FF 5. Examiner finds that methyl and ethyl "are adjacent homologous alkyl groups" and "alkyl chain homo logs are prima facie obvious" (Ans. 6). ANALYSIS Based on Campbell, Examiner concludes that, at the time Appellants' invention was made, it would have been prima facie obvious to replace: (1) the potassium on Campbell's compound 40 with sodium to produce a compound having the formula (Ila) as is required by Appellants' claims 1-3 or, in the alternative, (2) methyl for ethyl to produce a compound having the formula (IIb) as is required by Appellants' claims 4--5 (Ans. 6-7; see FF 2- 5; cf FF 1; Appellants' claims 1-5). According to Examiner, a person of ordinary skill in this art would have made the foregoing modifications to Campbell's compound ( 40) "to obtain new compounds with [the] presumed expectation that structurally similar compounds would have similar properties" (Ans. 7; see id. at 9). We are not persuaded. As Appellants explain, Campbell "describes the preparation of (E)- and (Z)-pulvinones by a sequence of reactions using several specific compounds as intermediates" (Br. 5). Campbell "discloses compound ( 40) only for its use in one particular reaction with ... methyl sulfate[] to make a methyl ester of the [following] formula Me0t{02Et o ·o [Campbell] provides no reason for using compound (40) for any other purpose and provides no reason to structurally modify compound ( 40)" (id.). 4 Appeal2014-003236 Application 13/591,431 We recognize, but are not persuaded by, Examiner's assertion that "[i]t is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant" (Ans. 10). There can be no doubt that a person of ordinary skill in this art would understand how to modify chemical compounds (see generally FF 1 ). Nevertheless, we find that Examiner's rationale, on this record, amounts to a per se rule of unpatentability (see FF 3 and 5). Reliance on per se rules of obviousness is legally incorrect and is inconsistent with 35 U.S.C. § 103. See In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). On this record, Campbell discloses compound 40 as a specific intermediate in the production of (Z)-S-benzylidene-4-hydroxyfuran-2(5H)- one (FF 1 ). What is missing on this record is a reason, absent hindsight, as to why a person of ordinary skill in this art would have made the modifications Examiner proposes to Campbell's compound 40 (see Br. 5-8). In re NTP, Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011) (Fed. Cir. 2011) ("Care must be taken to avoid hindsight reconstruction by using 'the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit."'). CONCLUSION OF LAW The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claims 1-5 under 35 U.S.C. § 103(a) as unpatentable over Campbell is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation