Ex Parte Ray et al

Patent Trial and Appeal Board

Aug 30, 2016

12727758 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121727,758 03/19/2010
101035 7590 09/01/2016
Sandoz (Princeton) - Luedeka Neely Group, P,C,
P. 0. Box 1871
Knoxville, TN 37901
FIRST NAMED INVENTOR
Anup Kumar Ray
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.
RG/G-34003D 3913
EXAMINER
AUDET, MAURY A
ART UNIT PAPER NUMBER
1675
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
LNG.PA TENT@gmail.com
docketing@luedeka.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANUP KUMAR RAY, HIREN KUMAR V. PATEL,
JOHANNES LUDESCHER, MARIAPPAN ANBAZHAGAN,
MAHENDRA R. PATEL, and INGOLF MACHER1
Appeal2015-000989
Application 12/727,758
Technology Center 1600
Before MELANIE L. McCOLLUM, JOHN G. NEW, and
TA WEN CHANG, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1Appellants state the real party-in-interest is Sandoz AG. App. Br. 3.
Appeal2015-000989
Application 12/727,758
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 32-39, 41, and 44--462 as unpatentable
under 35 U.S.C. § 103(a) as being obvious over the combination of Konfino
et al. (US 5,981,589, November 9, 1999) ("Konfino") and Braisted et al. (US
6,271, 198 B 1, August 7, 2001) ("Braisted"). 3,4
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
REPRESENTATIVE CLAIM
Claim 32 is representative of the claims on appeal and recites:
Claim 32. A process for preparing a glatiramer
polypeptide comprising L-tyrosine, L-alanine, L-glutamate and
L-lysine, or a pharmaceutically acceptable salt thereof, wherein
said process comprises treating a protected glatiramer
polypeptide comprising protected L-glutamate moieties and
protected L-lysine moieties with an aqueous solution of sodium
hydroxide to remove protecting groups from the L-glutamate
and L-lysine moieties and form the glatiramer polypeptide,
wherein the protecting groups of the L-glutamate and L-lysine
moieties are removed by the sodium hydroxide.
2 Claims 1-31, 40, 42, 43, and 47-77 are canceled. App. Br. 4.
3 A third reference, Gallot et al., Homopolymers and copolymers of NE:-4-
phenylbenzamido-L-lysine and NE:-trifluoroacetyl-L-lysine: Synthesis and
liquid-crystalline properties, 203 MACROMOL. CHEM. PHYS. 1346-1356
(2002) has been withdrawn by the Examiner. Ans. 2.
4 The Examiner also rejected claims 32-39, 41, and 44--46 as being
unpatentable under the nonstatutory doctrine of obviousness-type double
patenting over claims 63-75 of copending Application No. 12/727,653.
Final Act. 12-14. Appellants have not appealed this rejection. App. Br. 8 &
Ans. 11. Thus, this rejection is maintained. Ans. 11.
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Application 12/727,758
App. Br. 12.
ISSUES AND ANALYSES
We agree with, and adopt, the Examiner's findings and conclusion
that the appealed claims are prima facie obvious over the cited prior art
references. We address the arguments raised by Appellants on appeal
below.
Issue
Appellants argue the Examiner erred because the combined cited prior
art fails to teach or suggest all of the limitations of claim 32. App. Br. 9.
Analysis
1A .. ppellants argue that independent claims 32, 33, and 34 have each
been amended to explicitly recite that the protecting groups of both the L-
glutamate and L-lysine moieties are removed by sodium hydroxide. App.
Br. 9. Appellants contend Konfino neither teaches nor suggests the use of
sodium hydroxide as a single deprotection agent for removal of both the L-
glutamate and the L-lysine protecting groups. Id. Rather, Appellants argue,
Konfino teaches the use of two deprotecting agents: (1) a mixture ofHBr
and glacial acetic acid to remove the L-glutamate protecting group; and then
(2) piperidine to remove the L-lysine protecting group. Id. (citing Konfino,
col. 2, 11. 21-25; Claim 1 ).
Appellants admit that Braisted mentions sodium hydroxide for various
uses, but contend it does not explicitly teach the removal of L-glutamate
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Application 12/727,758
protecting groups. App. Br. 10 (citing, e.g., Braisted col. 83, 1. 38; col. 117,
11. 57-58). According to Appellants, the only discussion of deprotecting
agents for L-glutamate in Braisted describes other, more "exotic"
deprotecting agents for this purpose, such as tetrakris (triphenylphosphine)
palladium in piperidine/DMA. Id. (citing Braisted col. 114, 11. 15-35).
Appellants contend the Examiner relies on Braisted' s teaching that
piperidine and sodium hydroxide are generally interchangeable at column
83. Id. (citing Braisted at col. 83, 1. 3). Therefore, Appellants assert, the
Examiner concluded it would have been "obvious to try" sodium hydroxide
de blocking of L-glutamate. Id.
However, Appellants argue, a conclusion that it would have been
obvious to try can only be sustained if a person of ordinary skill in the art
would have had a reasonable expectation of success in attempting to modify
of the prior art. App. Br. 10. Appellants argue that any such expectation is
undermined in this case because the Examiner has repeatedly found that the
field of art is unpredictable. Id. (citing, e.g., Non-Final Act. 13-15 (June 28,
2013)). Specifically, Appellants assert that, earlier in the prosecution of the
instant application, the Examiner rejected the claims as unpatentable under
35 U.S.C. § 112, first paragraph, for lack of enablement, finding that the
field of art is so unpredictable that the Appellants' examples relating to the
use of sodium hydroxide for removal of protecting groups failed to enable
claims covering removal of protecting groups with other alkali or alkaline
earth metal hydroxides. Id.
Appellants contend, therefore, that given the Examiner's previous
finding the art is unpredictable, it cannot fairly be argued that the teachings
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Application 12/727,758
of Braisted would have given a person of ordinary skill in the art a
reasonable expectation that L-glutamate moieties could be successfully
deblocked using sodium hydroxide. App. Br. 11. To argue otherwise,
Appellants contend, would be inconsistent with the Examiner's previous
position. 5
The Examiner responds that the Braisted reference explicitly identifies
sodium hydroxide as a suitable deprotecting agent. Ans. 11 (citing Braisted
col. 83, 11. 33--44; see also col. 87). Specifically, the Examiner finds
Braisted teaches sodium hydroxide is a known polypeptide deprotection
agent for the cleavage of various ester-protecting groups. Id. Therefore, the
Examiner concludes, its use in the instant application, for the purpose for
which it is taught in the prior art to be suitable, renders its selection here
primafacie obvious. Id. The Examiner also points out that, because
Appellants' independent claim 32 is not specific as to which protecting
groups are being used, the prima facie case of obviousness is maintained for
the reasons of record. Id.
We are not persuaded by Appellants' arguments. The gravamen of
Appellants' arguments is that Braisted fails to teach or suggest the removal
of L-glutamate protecting groups and that a person of ordinary skill in the art
would not have a reasonable expectation of success in employing sodium
5 In their Reply Brief, Appellants make a separate argument for the
patentability of claim 34. Because this argument is not presented in the
Appeal Brief, and is consequently untimely, we do not consider it herein.
See 37 C.F.R. § 41.37(c)(l)(iv) (2012); see also Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative) (arguments not raised in the
Appellate Brief are considered waived).
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Appeal2015-000989
Application 12/727,758
hydroxide to remove L-glutamate protecting groups because of the
unpredictability of the art. See App. Br. 9-10.
As an initial matter, we agree with the Examiner that the claims recite
only "protecting groups" on the L-glutamate and L-lysine residues, without
specifying the nature of the protecting groups. Therefore, any protecting
group on the individual amino acids must fall within the scope of the claim.
Braisted teaches:
Suitable protecting groups for use in orthogonally
protecting the side chain amide bond-forming substituents of the
flanking residues with respect to other functional groups and/ or
with respect to each other include pairs of differentially
removable carboxy protective groups, such as a reduction-labile
carboxy protective group, e.g. allyl or benzyl esters, paired with
a base-labile carboxy protective group, e.g.
fluorenylmethylesters, methyl or other primary alkyl esters.
Fluorenylmethyl, methyl or other primary alkyl groups or other
base-labile carboxy protective groups can be removed from their
corresponding esters to }'ield a free carboxy' group (iAvithout
deprotecting ally! or benzyl esters or other reduction-labile
esters) by saponification of the esters with a suitable base such
as piperidine and sodium hydroxide in a suitable solvent such as
dimethylacetamide, or methanol and water, for a period of 10 to
120 minutes, and preferably 20 minutes, 0 to 50° C.
Braisted, col. 83, 11. 25--41 (emphasis added). Braisted thus teaches a
carboxyl protecting group of an amino acid in a polypeptide can be removed
via "saponification of the esters with a suitable base such as piperidine and
sodium hydroxide." It is extremely well-known in the art that glutamate
(glutamic acid) is an acidic amino acid with a secondary carboxyl group.
See, e.g., "L- Glutamic Acid", CHEMICAL BOOK, available at
http://www.chemicalbook.com/ProductChemicalPropertiesCB4 3 5 5 5 60_EN.
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htm. We agree with the Examiner that a person of ordinary skill in the art
would have recognized that Braisted teaches that the protective group of a
carboxyl moiety, such as that found in glutamate, could be removed by
treatment with sodium hydroxide.
Appellants argue further that the Examiner had previously found, in
the context of an enablement analysis, that the art was too uncertain for a
person of ordinary skill to have a reasonable expectation of success when
using sodium hydroxide to remove a protective group from L-glutamate.
However, given the explicit teaching of Braisted that sodium hydroxide can
be used to remove a group protecting a carboxyl group of an amino acid,
together with the broadness of the claim, we agree with the Examiner that a
person of ordinary skill would have had a reasonable expectation of success
in using sodium hydroxide to remove a protective group from L-glutamate.
See In re Langi, 795 F.2d 887,897 (Fed. Cir. 1985) ("Only a reasonable
expectation of success, not absolute predictability, is necessary for a
conclusion of obviousness"). We consequently affirm the Examiner's
conclusion that the claims on appeal are obvious over the combined cited
prior art.
DECISION
The Examiner's rejection of claims 32-39, 41, and 44--46 as
unpatentable under 35 U.S.C. § 103(a) is affirmed.
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Application 12/727,758
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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