Ex Parte Muehl

Board of Patent Appeals and Interferences

May 27, 2003

08402413 (B.P.A.I. May. 27, 2003)

1 The examiner has withdrawn two previous rejections of the claims under 35
U.S.C. § 112 and the doctrine of obviousness-type double patenting (Answer, page 7).
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BRIAN S. MUEHL
___________
Appeal No. 2001-2011
Application No. 08/402,413
__________
ON BRIEF
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Before WINTERS, WILLIAM F. SMITH and SCHEINER, Administrative Patent Judges.
SCHEINER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 through 3, the only claims remaining in the application.
We refer to Appendix A, which accompanied appellant’s brief, for the claims on
appeal (as amended by the amendment after final filed December 17, 1996).
The references relied on by the examiner are:
Descamps et al. (Descamps ‘707) 3,920,707 Nov. 18, 1975
Descamps et al. (Descamps ‘204) 4,007,204 Feb. 8, 1977
Pestellini et al. (Pestellini) 4,485,112 Nov. 27, 1984
Kennedy et al. (Kennedy) WO 89/02893 Apr. 6, 1989
All of the claims stand rejected under 35 U.S.C. § 103 as unpatentable over
Kennedy, Descamps ‘707, Descamps ‘204 and Pestellini.1
DISCUSSION
Appeal No. 2001-2011
Application No. 08/402,413
Page 2
Claims 1 through 3 are drawn to “benzothiophene compounds substituted at the
6-position, with a bridging group at the 3-position, and having a basic side chain.” Brief,
page 3. In view of its brevity, we reproduce the examiner’s rejection in its entirety
(except that, for the sake of clarity, we have substituted a single name for a reference
wherever the examiner has used more than one name for the same reference):
Kennedy [ ], Descamps [‘204, Descamps ‘707] and Pestellini are
references in the same field of anti-angina/anti-arrhythmia compounds.
Kennedy [d]isclosed compounds having a protected hydroxy or
alkoxymethylene chain between the benzothi[o]nyl moiety and the phenyl
moiety. The combined teachings of Descamps ‘204, [Descamps] ‘707
and Pestellini [ ] placed the following teaching in the possession of the
artisan that:
1) the benzofuranyl ring system and benzothi[o]nyl ring system are
interchangeable for such compounds (see [Descamps] ‘204 vs
[Descamps] ‘707:
2) the linkage between the bicyclic ring system and the phenyl ring
can be CO or substituted alkylene (see [Descamps] ‘204 v [Kennedy],
linkage at 3-position, see [Kennedy] p. 7 formula XV, XVI and p. 9 formula
XX.
3) the position isomers also have the expected similar activity (see
Pestellini);
4) the substituents on the linking alkylene chain can be hydroxy,
alkoxy, acylated hydroxy, amino, mono- or di-alkylamino (see [Pestellini’s]
linking group);
5) the “other substituent on the bicyclic ring system can be alkyl,
cyclohexyl, or phenyl[.]
Answer, pages 4 and 5.
Noticeably missing from this disjointed series of conclusions is a coherent
Appeal No. 2001-2011
Application No. 08/402,413
Page 3
2 As stated in Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996) (citation omitted), “It is well-established
that before a conclusion of obviousness may be made based upon a combination of
references, there must have been a reason, suggestion or motivation to lead an
inventor to combine those references.”
3 In the future, the examiner would be advised to set forth an obviousness
rejection structured according to the model set forth in MPEP 706.02(j). This will
ensure that the rejection includes a discussion of why one of ordinary skill in the art
would have had reason to make the proposed modifications to the prior art.
statement explaining why any of the claims on appeal are unpatentable.2 We are at a
loss as to exactly how and why the examiner proposes combining the references to
arrive at the claimed compounds. For that matter, the examiner’s rejection does not
even identify how the claimed compounds correspond to or differ from the prior art.3
On cursory review of the Kennedy reference, however, we note that Kennedy’s
compound XXI, although unsubstituted at the 6-position, appears to be particularly
close to the claimed compounds in all other respects - provided certain selections are
made for R3, R5 and R6 (we leave it to the examiner to determine whether this is actually
the closest compound described). Indeed, appellant, at least, seems to indicate that
Kennedy teaches “benzothiophene compounds” which differ from the claimed
compounds only in that they “are not substituted at the 6-position.” Brief, page 5.
It may be that somewhere in the references cited by the examiner there is a
reason or suggestion to substitute Kennedy’s compounds at the 6-position in the
manner claimed. If so, the examiner has not identified it. As set forth in In re Kotzab,
217 F.3d 1365, 1369-70, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000):
Most if not all inventions arise from a combination of old elements. []
Thus, every element of a claimed invention may often be found in the
prior art. [] However, identification in the prior art of each individual part
claimed is insufficient to defeat patentability of the whole claimed
Appeal No. 2001-2011
Application No. 08/402,413
Page 4
invention. [] Rather, to establish obviousness based on a combination of
the elements disclosed in the prior art, there must be some motivation,
suggestion or teaching of the desirability of making the specific
combination that was made by the applicant. [citations omitted]
What is lacking in the examiner’s treatment of the claims on appeal is a reason,
suggestion or motivation, stemming from the prior art, which would have led a person
having ordinary skill to the claimed method. Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir. 1996). On this
record, the only reason or suggestion to modify the references to arrive at the present
invention comes from appellants’ specification, and we are constrained to reverse the
examiner’s rejection of claims 1 through 3 under 35 U.S.C. § 103.
REVERSED
)
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
)
William F. Smith ) APPEALS AND
Administrative Patent Judge )
) INTERFERENCES
)
)
)
Toni R. Scheiner )
Administrative Patent Judge )
Eli Lilly and Company
Appeal No. 2001-2011
Application No. 08/402,413
Page 5
Patent Division/JDS
Lilly Corporate Center
Indianapolis, IN 46285