Ex Parte Maloney et alDownload PDFPatent Trial and Appeal BoardFeb 26, 201310884561 (P.T.A.B. Feb. 26, 2013) Copy Citation 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. 10/884,561 07/02/2004 Thomas J. Maloney ITDPAT006US 6472 43737 7590 02/27/2013 John R. Casperson P.O. Box 36369 Pensacola, FL 32516-6369 EXAMINER PERREIRA, MELISSA JEAN ART UNIT PAPER NUMBER 1618 MAIL DATE DELIVERY MODE 02/27/2013 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 THOMAS J. MALONEY, ARTHUR E. CAMP JR., and JESSE J. HERNANDEZ ____________ Appeal 2011-010938 Application 10/884,561 Technology Center 1600 ____________ Before DONALD E. ADAMS, LORA M. GREEN, and FRANCISCO C. PRATS, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 5-12 and 21-23 (App. Br. 2; Ans. 3). We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE CASE The claims are directed to methods of forming an I125 labeled derivative of methylene blue. Claim 5 is representative and is reproduced in the Claims Appendix of Appellants’ Brief. Appeal 2011-010938 Application 10/884,561 2 Claims 5-12 and 21-23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Blower,1 Raffaelli,2 Kassis,3 Ünak,4 Helfferich,5 and Brown.6 We affirm-in-part. ISSUE Does the preponderance of evidence on this record support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Appellants’ “invention relates to iodinated methylene blue (methylene blue being phenothiazine-5-ium-3,7-bis(dimethylamino)- chloride….)” (Spec. 6: 1-2 as amended March 7, 2008; see also June 25, 2008 Final Rejection 2 (Appellants’ March 7, 2008 “amendment to the [S]pecification is acknowledged and accepted”)). FF 2. Blower suggests “the preparation of 123I-labelled methylene blue via the treatment of aqueous methylene blue with 123I-sodium iodide in the presence of potassium iodate and hydrochloric acid” and passing the 1 Blower PJ, et al., Radioiodinated methylene blue for melanoma targeting: chemical characterisation and tumour selectivity of labelled components, 24(4) Nucl. Med. Biol. 305-10 (1997) (PubMed Abstract). 2 Andrea Raffaelli, et al., Investigation on the iodination reaction of methylene blue by liquid chromatography – mass spectrometry with ionspray ionization, 854 Journal of Chromatography A 57-67 (1999). 3 Kassis et al., US 4,851,520, issued July 25, 1989. 4 Turan Ünak et al., Self-radioiodination of iodogen, 54 Applied Radiation and Isotopes 749-752 (2001). 5 ION EXCHANGE, Ch. 5, pp. 95 and 230 (Friedrich Helfferich, ed., McGraw-Hill Book Company, Inc., New York 1962). 6 Brown et al., US 6,448,299 B1, issued September 10, 2002. Appeal 2011-010938 Application 10/884,561 3 reaction mixture “through a Dowex anion exchange resin to determine labeling efficiencies” (Ans. 5). FF 3. Raffaelli suggests a “method of iodinating methylene blue (with or without KI carrier) via contacting methylene blue with a potassium iodate/iodide solution and an HCl solution” and “purify[ing] by ion- exchange chromatography” (id. at 5-6). FF 4. Raffaelli suggests “that radioactive iodine (131I and 123I) labeled methylene blue is used for early diagnosis of melanoma metastases” (id. at 6). FF 5. Examiner finds that Blower and Raffaelli fail to “disclose the addition of a supported iodogen and acetate ions to the reaction mixture” or “preconditioning … [an] ion exchange column” (id.; id. at 7). FF 6. Kassis suggests “radioiodination with a radioactive iodide ion, such as the sodium salt of 123I, 125I, 131I a water-insoluble oxidizing agent, such as iodogen and acetic acid,” wherein the radioiodination method “is suitable for carrier and no[n-]carrier added syntheses” (id. at 6). FF 7. Ünak suggests “that supported iodogen can easily be used for radioiodination of organic compounds having an aromatic moiety” (id.). FF 8. Examiner finds that methylene blue has an aromatic moiety (id. at 7). FF 9. Ünak suggests that “1,3,4,6-Tetrachloro-3α-6α-diphenylglucoluril known as iodogen … has become a widely used radioiodination agent … [wherein it] is dissolved in an organic solvent and coated onto the wall of a glass tube” to which the reactants are added (Ünak, col. 1, ll. 2-10). FF 10. Appellants disclose that The radiolabeled compositions of the invention are made by contacting …[methylene blue] and I-125 in the presence of supported iodogen (1,3,4,6-tetrachloro-3A,6A- Appeal 2011-010938 Application 10/884,561 4 diphenylgylcolouril …) oxidizing agent to form a reaction product which has been iodinated with I-125. Preferably, the iodogen is coated on the inside of the reaction vessel, such as by being solvated in chloroform which is then evaporated from the reaction vessel. (Spec. 8: 1-7.) FF 11. Helfferich suggests that “anion exchangers can be conditioned by alternate treatment with NaOH and HCl” (Ans. 7). FF 12. Brown suggests “conventional/standard methods for rejuvenating/conditioning an anion exchange resin involves sodium chloride (brine) or alkali metal hydroxides” (id. at 8). ANALYSIS Claims 5 and 10: Based on the combination of Blower, Raffaelli, Kassis, and Ünak Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious to modify Kassis’ iodination method to include an iodogen oxidizing agent on a support, as suggested by Ünak, to iodinate methylene blue as suggested by Blower and Rafaelli (Ans. 7; FF 1- 10). We are not persuaded by Appellants’ contentions regarding Blower and Raffaelli, which fail to account for the other references relied upon by Examiner (App. Br. 8-10; Cf. FF 6-9). Appellants’ claimed method does not require the production of a product that is stable for a period of several weeks (see Appellants’ Claim 5). Therefore, we are not persuaded by Appellants’ contentions regarding stability (App. Br. 8). Similarly, Appellants’ claimed method does not require iodination of a “preferred iodination site” on methylene blue. Therefore, we are not persuaded by Appeal 2011-010938 Application 10/884,561 5 Appellants’ contentions regarding a preferred iodination site (App. Br. 11- 12). Ünak suggests the use of an iodogen oxidizing agent on a support for radioiodination of organic compounds having an aromatic moiety, such as methylene blue (FF 7-8). Accordingly, we are not persuaded by Appellants’ contention that Kassis fails to suggest, or teaches way, from this element of the claimed invention (App. Br. 11). We are not persuaded by Appellants’ contentions regarding Kassis and Ünak, which fail to account for the other references relied upon by Examiner (App. Br. 12-13; Cf. FF 2-4). In this regard, we are not persuaded by Appellants’ contention that Ünak fails to suggest the “use of acetate ions,” which is suggested by Kassis (App. Br. 12; Cf. 6). Appellants’ claim 5 does not require the iodination reaction to proceed at a particular rate (see Appellants’ Claim 5). Therefore, we are not persuaded by Appellants’ contention regarding “the rate of the iodination reaction” (App. Br. 13). Blower and Raffaelli suggest the use of ion-exchange chromatography to purify iodinated methylene blue (FF 2-3). Therefore, we are not persuaded by Appellants’ contention that “Unak [sic] doesn’t teach how to get rid of th[e water-soluble radio iodinated iodogen] contaminant” (App. Br. 13-14). Examiner relies on Helfferich and Brown to support a conclusion that “it would have been obvious to one skilled in the art to precondition[] the ion exchange column of” Blower or Raffaelli (Ans. 8). Appellants’ claim 5 does not require an ion exchange column that is preconditioned in a Appeal 2011-010938 Application 10/884,561 6 particular manner (see Appellants’ Claim 5). Therefore, Appellants’ contentions regarding Helfferich and Brown are not persuasive. We recognize, but are not persuaded by, Appellants’ unsupported contention that “[t]he common definition of a chemical derivative is ‘a compound that can be imagined to originate from another compound if ‘one atom’ is replaced with another atom or group of atoms’” (Reply Br. 2). Therefore, we are not persuaded by Appellants’ contention that Raffaelli fails to suggest the “claimed ‘radiolabeled derivative of methylene blue[, because] Rafaelli involved the removal of more than ‘one atom,’ which doesn’t result in the formation of a ‘derivative’ under the … [foregoing] definition” (id. at 2-3). Claim 11: We are not persuaded by Appellants’ contentions regarding Helfferich, which fail to account for the other references relied upon by Examiner (App. Br. 14; Cf. FF 2-3). Claim 12: For the reasons set forth by Examiner, we are not persuaded by Appellants’ contention that Kassis, Helfferich, and Brown fail to suggest preconditioning an anion exchange column prior to flowing the reaction product through (Ans. 15; Cf. App. Br. 12, 14, and 15). Claim 21: Appellants contend that Kassis fails to suggest “employing calcium iodate as recited in claim 21” (App. Br. 12). Examiner fails to direct our Appeal 2011-010938 Application 10/884,561 7 attention to an evidentiary basis or reasoning on this record that suggests this element of Appellants’ claim 21. CONCLUSION OF LAW The preponderance of evidence on this record supports a conclusion of obviousness with regard to claims 5-12, 22, and 23. The rejection of claims 5, 10, 11, and 12 under 35 U.S.C. § 103(a) as unpatentable over the combination of Blower, Raffaelli, Kassis, Ünak, Helfferich, and Brown is affirmed. Because they are not separately argued claims 6-9, 22, and 23 fall together with claim 5. The preponderance of evidence on this record fails to support a conclusion of obviousness with regard to claim 21. The rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable over the combination of Blower, Raffaelli, Kassis, Ünak, Helfferich, and Brown is reversed. TIME PERIOD FOR RESPONSE 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-IN-PART lp Copy with citationCopy as parenthetical citation