Ex Parte Ouk et al

Patent Trial and Appeal Board

Sep 21, 2018

13703890 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/703,890 03/05/2013
21971 7590 09/25/2018
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Samedy Ouk
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.
18545-771.831 2716
EXAMINER
BORI, IBRAHIM D
ART UNIT PAPER NUMBER
1629
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMEDY OUK, ESMIR GUNIC,
JEAN-MICHEL VERNIER, AND CHIXU CHEN1
Appeal2017-009447
Application 13/703,8902
Technology Center 1600
Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
DAVID COTTA, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to methods of treating gout in a
human. The Examiner rejected the claims on the grounds of obviousness-
type double-patenting. Appellants appeal the rejection pursuant to 35 U.S.C.
§ 134. We have jurisdiction under 35 U.S.C. § 6(b).
The rejections are AFFIRMED.
1 The Appeal Brief ("App. Br.") 1 lists Ardea Biosciences, Inc., as the real
party in interest.
2 Hereinafter, "the '890 application."
Appeal2017-009447
Application 13/703,890
STATEMENT OF THE CASE
The claims stand finally rejected by the Examiner as follows:
Claims 30 and 42 on the ground of non-statutory obviousness-type
double-patenting as unpatentable over claims 1-8 of U.S. Pat. No. 8,629,278
("the '278 patent").
Claims 30 and 42 on the ground of non-statutory obviousness-type
double-patenting as unpatentable over claims 1-10 of U.S. Pat. No.
8,541,589 ("the '589 patent").
Representative claims of the '890 application, the '278 patent, and the
'5 89 patent are reproduced below:
Claim 30 of the '890 application
30. A method of treating gout in a human, comprising
administering to the human an effective amount of a compound
of formula:
CN
or a pharmaceutically acceptable salt or solvate thereof.
2
Appeal2017-009447
Application 13/703,890
Claim 1 of the '589 patent
1. A compound of formula:
~ ~Oil.
s" Y
n
or a pharmaceutically acceptable salt or solvate thereof.
Claim 1 of the '278 Patent
1. A method of reducing serum uric acid levels in a
human, comprising administering to the human an
effective amount of a compound of formula:
X ~OlL
s/ '(
0
CN
or a pharmaceutically acceptable salt or solvate thereof.
REJECTIONS
The Examiner found that the claims of the '890 application, the '589
patent, and '278 patent each recite the same chemical compound, "2-((3-( 4-
cyanonaphthalen-1-yl)pyridin-4-yl)thio )-2-methylpropanoic acid." Final
Act. 3, 6. For brevity, we refer to it as "the Compound."
As shown in the figure below (hereinafter "figure"), the' 5 89 patent is
based on a continuation application (13/857,108 or "the '108 application")
3
Appeal2017-009447
Application 13/703,890
of the '890 application (13/703,890) at issue in this appeal. The '278 patent
is based on a divisional application (13/913,272 or "the '272 application") of
the '108 application.
US Provisional 61/355~491
Filing