Ex Parte or

Board of Patent Appeals and Interferences

Aug 11, 2010

10763377 (B.P.A.I. Aug. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/763,377 01/23/2004 Yat Sun Or 4014.1074 US 7571
38473 7590 08/11/2010
ELMORE PATENT LAW GROUP, PC
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EXAMINER
KRISHNAN, GANAPATHY
ART UNIT PAPER NUMBER
1623
MAIL DATE DELIVERY MODE
08/11/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte YAT SUN OR
__________

Appeal 2010-003181
Application 10/763,377
Technology Center 1600
__________

Before BRADLEY R.GARRIS, LINDA M. GAUDETTE, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a process
for achieving a bridged macrocyclic product. The Examiner has rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-003181
Application 10/763,377

2
STATEMENT OF THE CASE
The application was previously subject to an appeal, which was
decided on August 25, 2008. In this previous appeal, an obviousness
rejection over Or (WO 99/21864 A1, May 6, 1999) was affirmed based on a
conclusion that Or anticipated claim 1 (Dec. 8-10). Subsequent to the
appeal, Appellant filed an Amendment, which among other things amended
claim 1. In response to the Amendment, the Examiner issued an Office
Action maintaining the obviousness rejection over Or. Appellant appeals
this rejection.
Claims 1-12 and 16 are pending and on appeal (App. Br. 2). We will
focus on claim 1, which reads as follows:
1. A process comprising the step of reacting a macrocyclic
compound characterized by at least two nucleophilic moieties with a
bifunctional bridging component characterized by its ability to form π-allyl
metal complex in the presence of catalyst, whereby each of two nucleophilic
moieties of the macrocyclic compound reacts with said bifunctional bridging
component, thereby achieving a bridged macrocyclic product.
(Emphasis added to denote language added subsequent to the previous
appeal.)
Claims 1-12 and 16 stand rejected under 35 U.S.C. § 103(a) as
obvious in view of Or (Ans. 3).
Appellant contends that it would not “have been obvious to one of
ordinary skill in the art, motivated to minimize process steps, to modify the
process of Or et al. by selecting this group of steps and somehow arrive at
the claimed process without even a secondary teaching suggesting a solution
to the generalized motivation” (App. Br. 4).
Appeal 2010-003181
Application 10/763,377

3
ISSUE
Has the Examiner set forth a prima facie case that Or suggests
reacting a macrocyclic compound having at least two nucleophilic moieties
with a bifunctional bridging component having the ability to form π-allyl
metal complex, whereby each of two nucleophilic moieties of the
macrocyclic compound reacts with the bifunctional bridging component?
FINDINGS OF FACT
1. Or discloses 6,11-bridged erythromycin compounds having
formulas (I) and (II) (Or, Abstract).
2. To make these compounds, Or discloses the methods illustrated
in Schemes 1-3 (id. at 26 & 34-36).
3. In Scheme 1, Or discloses that the “6-hydroxy group of
compound 3 is . . . alkylated by reaction with an alkylating agent in the
presence of base to give compound 4,” where R is preferably allyl (id. at 27-
28 & 34).
4. In Scheme 2, Or discloses “treat[ment] with an excess of
sodium hexamethyldisilazide or a hydride base in the presence of
carbonyldiimidazole in an aprotic solvent for about 8 to about 24 hours at
about -30 °C to room temperature to give compounds 10a and 10b” (id. at 29
& 35).
5. In Scheme 3, Or discloses reacting compounds 10a and 10b
with a H2N-(CH2)m-A-B-D-precursor compound “in the presence of a
suitable base to give compounds 12a and 12b, respectively” (id. at 29 & 36).
It is undisputed that, in this reaction, a nucleophilic moiety of the precursor
Appeal 2010-003181
Application 10/763,377

4
compound is reacting with an electrophilic moiety of the macrocyclic
compound (App. Br. 5 & Ans. 5).
6. Or also discloses that “[o]nce compounds 12a and 12b have
been prepared it is possible to close the ring and prepare compounds 14a and
14b,” which is also depicted in Scheme 3 (id. at 32 & 36).
PRINCIPLES OF LAW
In determining obviousness, the “test asks not merely what the
references disclose, but whether a person of ordinary skill in the art,
possessed with the understandings and knowledge reflected in the prior art,
and motivated by the general problem facing the inventor, would have been
led to make the combination recited in the claims.” In re Kahn, 441 F. 3d
977, 988 (Fed. Cir. 2006). “[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” Id.
ANALYSIS
Or discloses a multi-step reaction for forming a bridged macrocyclic
product (Findings of Fact 2-6). Although one of ordinary skill in the art may
have been motivated by a desire to reduce the number of steps, we agree
with Appellant that the Examiner has not set forth a prima facie case that it
would have been obvious to rearrange Or’s steps so that a macrocyclic
compound having at least two nucleophilic moieties is reacted with a
bifunctional bridging component having the ability to form π-allyl metal
complex, whereby each of two nucleophilic moieties of the macrocyclic
compound reacts with the bifunctional bridging component.
Appeal 2010-003181
Application 10/763,377

5
CONCLUSION
The Examiner has not set forth a prima facie case that Or suggests
reacting a macrocyclic compound having at least two nucleophilic moieties
with a bifunctional bridging component having the ability to form π-allyl
metal complex, whereby each of two nucleophilic moieties of the
macrocyclic compound reacts with the bifunctional bridging component.
We therefore reverse the obviousness rejection of claim 1 and of claims 2-12
and 16, which depend from claim 1.

REVERSED

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