Ex Parte Pagoria et al

Patent Trial and Appeal Board

Apr 29, 2016

12426774 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/426,774
78980 7590
LLNL/Zilka-Kotab
0412012009
05/03/2016
Lawrence Livermore National Laboratory
L-703, P.O. Box 808
Livermore, CA 94551
FIRST NAMED INVENTOR
Philip F. Pagoria
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.
IL-11975/LLNLP037 5629
EXAMINER
WILLIS, DOUGLAS M
ART UNIT PAPER NUMBER
1624
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
llnl-docket@llnl.gov
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP F. PAGORIA and MAO XI ZHANG 1
Appeal2014-004800
Application 12/426,774
Technology Center 1600
Before MELANIE L. MCCOLLUM, ULRIKE W. JENKS, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
methods for manufacturing pyrazines, which have been rejected as failing to
comply with the written description, enablement, and indefiniteness
requirements. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify the Real Party in Interest as Lawrence Livermore
National Security, LLC. Appeal Br. 2.
Appeal2014-004800
Application 12/426,774
STATEMENT OF THE CASE
The present invention relates to synthesis of organic compounds, and
more particularly to synthesis of compounds such as 2,6-diaminopyrazine-1-
oxide and 2,6-diamino-3,5-dinitropyrazine-l-oxide. Spec. 1.
Claims 1--4, 37, 38, 42, and 43 are on appeal. Claim 1 is illustrative
and reads as follows:
1. A method for synthesizing a pyrazine-containing material,
compnsmg:
contacting an iminodiacetonitrile derivative with a base
and a reagent selected from a group consisting of a
hydroxylamine, a hydroxylamine salt, an aliphatic amine, a
primary amine, a secondary amine, an aryl-substituted
alkylamine, an alcohol, an alkanolamine and an aryl
alcoholamine,
wherein the base is selected from a group consisting of a
metal hydroxide, pyridine, a tertiary amine, and a secondary
amme.
The claims stand rejected2 as follows:
Claims 37 and 38 have been reject under 35 U.S.C. § 112, first
paragraph, as lacking written description.
Claims 1--4 and 43 have been rejected under 35 U.S.C. § 112, first
paragraph, as not enabled.
2 Appellants have also asked the Board to consider the objections to the
claims raised by the Examiner. The Board normally only considers matters
affecting the merits of the invention, i.e., rejections of claims. See 37 C.F.R.
§ 41.31 ( c) (2011 ). Matters not affecting the merits of the invention, such as
objections to the claims or Specification or allegations of procedural errors
by the Examiner (e.g., failure to designate a new ground of rejection as
such), are to be raised by petition to the Director. See 37 C.F.R. §§ 1.181-
183; see also MPEP §§ 1002, 1207.03 (IV) (9th Ed., Rev. 7, Nov. 2015).
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Application 12/426,774
Claim 42 has been rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
I
Issue
The Examiner has rejected claims 37 and 38 under 35 U.S.C. § 112,
first paragraph, for lacking written description. The Examiner finds that the
Specification only teaches a yield of 2,6 diamino-3,5-dinitropyrazine -1-
oxide (LLM-105") ranging from 0% to 95% and that there is nothing in the
disclosure to explicitly or inherently teach a yield of 65% to 95%. Ans. 15-
19. The Examiner also notes that the disclosure only teaches a yield on
LLM-105 of 64 %, outside the range recited in the claims. Ans. 17.
Appellants contend that the recited range need not be literally
disclosed in the Specification. Appellants further contend that the range 65-
95% falls within the range of 0-95% and is therefore inherently disclosed.
Appeal Br. 6-10. Appellants further argue that the Examiner has introduced
no evidence to show why a person of ordinary skill in the art would not
appreciate that Appellants had in their possession a yield range of from 65%
to 95% given the disclosure of a yield from 0% to 95%. Appeal Br. 7.
Appellants also asserts that it would be against public policy to allow the
rejection to stand. Appeal Br. 10-12.
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that claims 37 and 38 fail to
satisfy the written description requirement as defined by 35 U.S.C. § 112,
first paragraph.
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Application 12/426,774
Findings of Fact
FF 1. According to the Specification, most prior art "syntheses of
LLM-105 [2,6-diamino-3,5-dinitropyrazine-l-oxide] ... proceed through the
intermediate compound, 2,6-diamino-3,5-dinitropyrazine (ANPZ), which
upon oxidation with trifluoroacetic peracid yields LLM-105 .... This gives
LLM-105 in high yield that is contaminated with 3-10% ANPZ." Spec. 1-
2: i-f 3, see also 9-10 i-f 34: "[T]he syntheses that proceed through ANPZ
energetic compounds are produced in each of the last three steps. There are
added costs associated with the synthesis of energetic compounds, mostly
due to additional safety requirements and fewer commercial companies
authorized to produce energetic compounds."
FF2. The Specification explains that "synthesis ofLLM-105 based
on the nitration ofDAPO [2,6-diaminopyrazine-1-oxide] has several
advantages over the procedure described ... , including reduced cost,
improved safety and purer final product." Spec. 9: i-f 34. "Nitration of
D APO in various conditions produces LLM-10 5 in the yield of about 0-
95 %. "Spec. 10: i-f 35. "Nitration ofDAPO in various conditions produces
LLM-105 in the yield of 30-80%." Spec. 7: i-f 21. The Specification,
however, only exemplifies the production ofLLM-105 using DAPO
resulting in a yield of LLM-105 of 64 %. Spec. 17-18.
Principles of Law
"[T]he question is whether, on the facts, the PTO has presented
sufficient reason to doubt that the broader described range also describes the
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Application 12/426,774
somewhat narrower claimed range." In re Wertheim, 541F.2d257, 264
(CCPA 1976) (emphasis added).
The "written description" requirement ... serves both to satisfy
the inventor's obligation to disclose the technologic knowledge
upon which the patent is based, and to demonstrate that the
patentee was in possession of the invention that is claimed ....
The descriptive text needed to meet these requirements varies
with the nature and scope of the invention at issue, and with the
scientific and technologic knowledge already in existence.
Capon v. Eshhar, 418 F.3d 1349, 1357 (Fed. Cir. 2005).
Analysis
We agree with the Examiner that the present disclosure does not
adequately support the claimed yield range of 65% to 95%. While the
Specification need not expressly support the claim limitation, we find that
there is insufficient disclosure in the Specification to support the limitation
either implicitly or inherently. The Specification states that nitration of
DAPO in various conditions produces LLM-105 in the yield of about 0-95%
and also recites a yield 30-80% ofLLM-105 (see FF2) .. According to the
Examiner, this range from 0-95% embraces almost every conceivable
product yield including ones where the reaction does not work. Ans. 17.
"[I]n a yield as low as 0% (i.e. the reaction will fail!!!)" Id. The only
exemplified yield recited in the disclosure is 64%, a level just below the
range recited in the claims. Ans. 17-18. We agree with the Examiner's
position that the disclosure in the Specification is insufficient to support the
claimed range from 65% to 95%.
Appellants point to no additional evidence to support the limitation
but instead rely on Wertheim to support their positon that a narrow range is
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Application 12/426,774
inherently disclosed within a broad range. Appeal Br. 9--10. Appellants'
reliance on Wertheim is misplaced. In Wertheim, the Court of Customs and
Patent Appeals found while a narrow range was not specifically recited in
the Specification, it was supported by both the broader range and several
examples disclosing values within the narrow range. Wertheim, 541 F .2d at
256. Unlike the disclosure in Wertheim, the present disclosure contains no
examples within the claimed range.
Appellants' suggestion that the Examiner has acquiesced to the
Appellants' Wertheim argument is unpersuasive. Reply Br. 8 & 9. While
the Examiner did not specifically reference the Wertheim decision, the
Examiner did discuss why the Examiner found that the narrower range in the
claims was not supported by the broad range in the claims. The Examiner's
maintenance of the written description rejection is an implicit response to
Appellants' Wertheim arguments as well as Appellants' policy arguments.
Finally, we have considered Appellants' policy arguments and find
them unpersuasive. Part of the quid pro quo of granting a patent is the
requirement that the inventor provide a written description of his invention
so as to convey to those skilled in the art that the inventor was in possession
of the invention when the application was filed. Capon, 418 F.3d at 1357.
Appellants' public arguments would have us ignore the explicit requirements
of Section 112. We decline to do so.
Conclusion of Law
We conclude that the Examiner has shown by a preponderance of the
evidence that claims 37 and 38 are not supported by the present disclosure
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Application 12/426,774
and do not satisfy the written description requirement as defined by 3 5
U.S.C. § 112, first paragraph.
II
Issue
The Examiner has rejected claims 1--4 and 43 under 35 U.S.C. § 112,
first paragraph, as non-enabled. The Examiner finds that while the
Specification is enabling for the four specific species recited in the
Specification, it is not enabling for the entire scope of the claims. Ans. 19.
The Examiner finds that it would require undue experimentation for one
skilled in the art to practice the claimed method to produce all the possible
compounds embraced by the claims. Id.
Appellants contend that the Specification provides sufficient guidance
to one skilled in the art to synthesize pyrazine containing compounds
without undue experimentation. Appeal Br. 16. While some
experimentation may be required, given the chemistry involved, it does not
involve "undue" experimentation. Appeal Br. 15-16.
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that claims 1--4 and 43 are
not enabled as defined by 35 U.S.C. § 112, first paragraph.
Findings of Fact
FF3. The Specification discloses the general reaction conditions for
making pyrazine containing materials. See Spec. 7: i-f 24
FF4. The Specification discloses a method for preparing the required
precursors. See Spec. 8: i-fi-125-27.
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Application 12/426,774
FF5. The Specification discloses the synthesis of 2,6-
diaminopyrazine-1-oxide ("DAPO"). See Spec 8-9: i-fi-128-32.
FF6. The Specification discloses the synthesis of 2,6-diamino-3,5-
dinitropyrazine-1-oxide, a.k.a. LLM-105. See Spec. 9-10: i-fi-132-37
FF7. The Specification discloses the preparation of 4 species of
pyrazine containing compounds. Spec. 14--18. The Examiner identifies the
4 species disclosed in the Specification to have the following structure:
(Ans. 6.)
Principles of Law
The first paragraph of 35 U.S.C. § 112 requires, inter alia,
that the specification of a patent enable any person skilled in the
art to which it pertains to make and use the claimed invention.
Although the statute does not say so, enablement requires that
the specification teach those in the art to make and use the
invention without "undue experimentation." In re Wands, 858
F.2d 731, 737 ... (Fed. Cir. 1988). That some experimentation
may be required is not fatal; the issue is whether the amount of
experimentation required is "undue."
In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991). Some experimentation,
even a considerable amount, is not "undue" if, e.g., it is merely routine, or if
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Application 12/426,774
the specification provides a reasonable amount of guidance as to the
direction in which the experimentation should proceed. In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988).
Analysis
We agree with the Appellants that that the Examiner has not set forth
a prima facie case that claims 1--4 and 43 are not enabled as required by 35
U.S.C. § 112, first paragraph. The Specification gives guidance as to how to
make pyrazine containing compounds in general and contains several
working examples. This is sufficient guidance for one skilled in the art to
practice the claimed method over the full scope of the claims. While some
experimentation may be required, given the nature of the chemistry involved
and the state of the art, we agree with Appellants that it does not rise to the
level of undue experimentation. Appeal Br. 15-16.
The Examiner's arguments have been considered but are
unpersuasive. The teachings of the instant Specification are not limited to
the four species identified by the Examiner but embrace the entire genus of
pyrazine containing compounds. The broad disclosure teaches the
preparation of a broad class of precursors as well as intermediates. FF3-7.
The Specification discloses the different substituents that can be used as well
as the different reactants contemplated by the inventors. FF4. Reaction
conditions are described as well. FF3. The Specification provides a
reasonable amount of guidance to one skilled in the art to make pyrazine
containing materials satisfying the enablement requirement.
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Application 12/426,774
Conclusion of Law
We conclude that the Examiner has failed to establish by a
preponderance of the evidence that claims 1--4 are not enabled as defined by
35 U.S.C. § 112, first paragraph.
III
Issue
The Examiner has rejected claim 42 as indefinite as defined by 35
U.S.C. § 112, second paragraph. The Examiner finds that the presence of an
undefined R group in the pyrazine containing compound renders the claim
indefinite. The Examiner finds that "[ c ]laims are unduly speculative where
they define only a portion of the molecule." Ans. 12.
Appellants contend that under existing case law the claims are not
indefinite even though they present a partial structure. Appeal Br. 33-35.
Appellants go on to argue that when read in light of the Specification, the
claim is not ambiguous as the Specification defines what is included in the R
group. Id.
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that claim 42 is indefinite as
defined by 35 U.S.C. § 112, second paragraph.
Findings of Fact
FF8. Claim 42 refers to a method for synthesizing 2-amino-6-R-
substituted pyrazines. Appeal Br. 46.
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Application 12/426,774
Principles of Law
Recitation of only part of a chemical structure broadens the claim but
does not render it indefinite. In re Fisher, 427 F.2d 833, 838 (CCPA 1970).
Analysis
We agree with Appellants that the use of the symbol R does not
render the claims indefinite. The absence of a definition of R broadens the
claim but does not render the claim indefinite.
In response, the Examiner only states that the Examiner disagrees
since the second paragraph of section 112 requires the claims to particularly
point out what the Appellants regard as his invention. Ans. 24. The
Examiner then goes on to recite several cases regarding the definiteness
requirement but offers no explanation as to how they apply to the instant
claim. Ans. 24--25. For example, the Examiner recites In re Wiggins, 488
F .2d 358 (CCP A 1973) for the proposition that when the scope of the claims
cannot be determined when considered in light of the Specification, the
claim is indefinite. The Examiner fails to show why one reading the
specification would not know what R comprises. Similarly, the Examiner
cites to Ex parte Miyazaki, 89 USPQ2d 1207 (BPAI 2008) for the
proposition that if a claim can be construed in two or more ways, the
Examiner is justified in requiring the applicant to more precisely define the
claim terms. Again, the Examiner fails to explain how the instant claims are
amenable to two or more interpretations.
We find that the Examiner has failed to articulate a sufficient reason
why the use of a generic "R" group renders the present claim indefinite.
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Conclusion of Law
We find that the Examiner has failed to establish that claim 42 is
indefinite as defined by 35 U.S.C. § 112, second paragraph.
IV
Issue
The Examiner has rejected claim 42 under 35 U.S.C. § 112, second
paragraph, as indefinite. The Examiner finds that the inclusion of specific
esters as well as the general term ester in a Markush group renders the claim
indefinite. Ans. 25. The Examiner also finds that since the claim can have
more than on interpretation, the Examiner can require the Appellants to
more precisely define the claim terms. Ans. 25.
Appellants argue that the double inclusion of an element by members
of a Markush group does not render the claim indefinite. Appeal Br. 37.
Legal Principles
"It is well known that 'members of the Markush group are ...
alternatively usable for purposes of the invention."' Abbott Labs. v. Baxter
Pharm. Prod., Inc., 334 F.3d 1274, 1281 (Fed. Cir. 2003) (citing In re
Driscoll, 562 F.2d 1245, 1249 (CCPA 1977)).
[T]he double inclusion of an element by members of a Markush
group is not, in itself, sufficient basis for objection to or rejection
of claims. Rather, the facts in each case must be evaluated to
determine whether or not the multiple inclusion of one or more
elements in a claim renders that claim indefinite. The mere fact
that a compound may be embraced by more than one member of
a Markush group recited in the claim does not necessarily render
the scope of the claim unclear. For example, the Markush group,
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Application 12/426,774
"selected from the group consisting of amino, halogen, nitro,
chloro and alkyl" should be acceptable even though "halogen" is
generic to "chloro."
MPEP § 2173.0S(h).
Analysis
We agree with Appellants that the inclusion of the term "ester" in the
present claim does not render the claim indefinite. The Markush group lists
alternative compounds that can be used as the leaving group in the practice
of claim 42. The use of the term "ester" in addition to the recitation of
specific esters may broaden the claim, but it does not render the claim
indefinite. The double inclusion of compounds in a Markush group does not
render the claims indefinite. MPEP § 2173.0S(h).
The Examiner argues that one skilled in the art cannot determine the
scope of the claim because it includes both the broad term ester and specific
ester. Ans. 26. This argument is unpersuasive. First, the Examiner has
offered no explanation as to why one skilled in the art would not be able
determine the scope of the claims. The term ester is one that is well
understood by chemists. That the claim also recites specific esters does not
change or confuse that meaning. Moreover, the Specification gives one
skilled in the art guidance as to what is meant by the term ester. Spec. 8.
The inclusion of esters in conjunction with the recitation of several specific
esters does make the scope of claim indeterminable.
The Examiner's reliance on Ex parte Wu, 10 USPQ2d 2031 (BP AI
1989), is misplaced. Ex parte Wu did not address the issue of the use of
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Application 12/426,774
broad and narrow terms but was concerned with the use of the term
"optionally" which is not at issue here.
Finally, the Examiner argues that since the claim is amenable to two
possible interpretations, the Examiner can require the Appellants to more
precisely define the limits of his claim. Ans. 26. However, the Examiner
offers no explanation as to why the claim is amenable to two different
interpretations. The use of the term ester is consistent with the recitation of
specific esters and does not yield two different interpretations.
Conclusion of Law
We find that the Examiner has failed to establish by a preponderance
of the evidence that claim 42 is indefinite as defined by 35 U.S.C. § 112,
second paragraph.
SUMMARY
We affirm the rejection of claims 37 and 38 as failing to meet the
written description requirement of 35 U.S.C. § 112, first paragraph. We
reverse the rejection of claims 1--4 for failing to meet the enablement
requirement of 35 U.S.C. § 112, first paragraph, and we reverse the rejection
of claim 42 as indefinite under 35 U.S.C. § 112, second paragraph.
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
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