Ex Parte REIFFENRATH et al

Patent Trial and Appeal Board

Aug 7, 2018

14660172 (P.T.A.B. Aug. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/660,172 03/17/2015 Volker REIFFENRATH
23599 7590 08/09/2018
MILLEN, WHITE, ZELANO & BRANIGAN, P.C.
2200 CLARENDON BL VD.
SUITE 1400
ARLINGTON, VA 22201
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.
MERCK-4303 3787
EXAMINER
MALLOY, ANNA E
ART UNIT PAPER NUMBER
1722
NOTIFICATION DATE DELIVERY MODE
08/09/2018 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):
docketing@mwzb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VOLKER REIFFENRA TH, MATTHIAS BREMER,
ROCCO FORTTE, HARALD HIRSCHMANN, and MARTIN ENGEL
Appeal2017-010629
Application 14/660, 172
Technology Center 1700
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
KAREN M. HASTINGS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1, 3-7, 10, 11, and 13-21 as
unpatentable over Schmidt et al., (US 7,018,685 B2, issued Mar. 28, 2006)
(hereinafter "Schmidt"). The Examiner also rejects all these claims on the
1 Appellant is the Applicant, Merck Patent GmbH, which is also stated to be
the real party in interest (Appeal Br. 1 ).
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Application 14/660, 172
grounds of obviousness type double patenting over Schmidt (Final Action 3,
4). 2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
Claim 1 is representative and reproduced below:
1. A compound of formula I:
]
both denote 1 and
in which
m and n
R1 and R2 each, independently of one another, denotes an alkyl radical
having 2 to 6 carbon atoms or an alkenyl radical having 3 to 6
carbon atoms.
OPINION
Upon consideration of the relied-upon evidence of record and each of
Appellant's contentions as set forth in the Appeal Brief filed March 23,
2017, and the Reply Brief filed August 11, 2017, we determine that
Appellant has not demonstrated reversible error in the Examiner's rejections
(e.g., Ans. 2-28 (mailed June 14, 2017)). We sustain the rejections for
essentially the reasons expressed by the Examiner in the Final Office Action
and the Answer. We add the following for emphasis.
Appellant mainly addresses both the obviousness-type double
patenting rejection and the obviousness rejection based on Schmidt with the
2 The Examiner withdrew all of the other rejections made in the Final Action
(Ans. 5).
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same arguments (Appeal Br. 20, stating the issues are "near identical").
Accordingly, the rejections based on Schmidt fall together.
Appellant does not specifically dispute the Examiner's findings with
respect to Schmidt; rather, they allege that there is no adequate guidance to
select the appropriate generic formula and its constituents to arrive at the
claimed subgenus of compounds (Appeal Br. 6; Reply Br. 2-8). This
argument is not persuasive. As the Examiner stated in the obviousness-type
double patenting rejection
the compound of formula (Ii) in claim 3 of [Schmidt ']685
when R4 is an alkoxy having 3 carbon atoms and R5 is an
alkoxy having 4 carbon atoms [ as recited as one of the limited
choices of claim 4 of Schmidt] encompasses formula I of
instant claim 1, specifically formula IA of instant claim 5, more
specifically formula IA3 of instant claim 6, a compound of
instant claims 13 and 14, more specifically a compound of
instant claim 15.
(Ans. 3).
Appellant does not sufficiently address the Examiner's position that
there are a limited number of possibilities needed to arrive at the claimed
invention that are all explicitly claimed by Schmidt (i.e., claims 3 and 4 of
Schmidt) and taught or suggested in Schmidt (e.g., Ans. 3-11, 13).
Appellant relies in part on In re Baird, 16 F.3d 380 (Fed. Cir. 1994) to argue
that a vast genus is not anticipating of a species (Appeal Br. 4, 5). However,
Baird's claimed subject matter was not obvious because there was no
direction to select the species claimed. See Baird, 16 F.3d at 382. In
contrast, here, one in the art need only select the specifically taught
compound and R groups of claims 3 and 4 of Schmidt. Cf also Perricone v.
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Medicis Pharm. Corp., 432 F.3d 1368, 1376 (Fed. Cir. 2005) ("This court
rejects the notion that one of [ 14 listed] ingredients cannot anticipate
because it appears without special emphasis in a longer list."); Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the
prior art's disclosure of a multitude of 1200 possible combinations failed to
render any particular formulation less obvious). In the instant case, the
rejection is obviousness, not anticipation, so it is only necessary that the
teaching of Schmidt would have rendered obvious the claimed compounds.
For all the reasons set out by the Examiner and above, a preponderance of
the evidence supports the Examiner's obviousness determination of the
claimed subject matter, as well as the obviousness-type double patenting
rejection.
Appellant further urges that the proffered Specification data evince
unexpected results, focusing on a Declaration submitted by one of the
inventors Dr. Harald Hirschmann on June 14, 2016, that discusses the
Specification examples (Appeal Br. 11-18; Reply Br. generally).
In the appeal before us, it is questionable whether the results shown
by the Specification/Declaration data are properly characterized as
unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir.
2007) ("[ A ]ny superior property must be unexpected to be considered as
evidence of non-obviousness"). We here emphasize that nowhere in the
Specification do the Inventors characterize the compounds described therein
as achieving results that are unexpected. It is only the conclusory opinion of
the inventor in the Declaration who describes these results without
explanatory embellishment as unexpected; that is, Declarant states "[t]he
compounds of the claims unexpectedly and surprisingly have a fine-tuned,
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balanced set of physical properties for the application as components of
liquid crystal mixtures" (Declaration p. 4). However, as pointed out by the
Examiner, Schmidt describes these compounds as having properties
particularly suited for application of liquid crystal mixtures (Ans. generally).
In the Reply Brief, Appellant states that Schmidt states that the
compounds described therein have high positive dielectric anisotropy values,
such that "one of ordinary skill in the art would have found it highly
unexpected that the compounds of the present claims indeed to the contrary
have highly negative dielectric anisotropy values. These results are
diametrically opposite to what one of ordinary skill in the art would have
expected based on the teachings of Schmidt" (Reply Br. 1 7, citing Schmidt
col. 3, 11. 33-37). However, we note that Schmidt describes that the
inventive "compounds of the formula (I) are particularly suitable, even in
small added amounts, to influence the dielectric anisotropy ... in the
direction of higher negative values" (Schmidt col. 7, 11. 32-24).
Under these circumstances, we view this Specification/Declaration
data as merely representing the optimization of the compounds described in
Schmidt which would have been within the skill of and, thus, obvious to the
artisan. See Pfizer, Inc. v. Apotex, Inc., 480 F3d at 1371 ("At most, then,
Pfizer engaged in routine, verification testing to optimize selection of one of
several known and clearly suggested pharmaceutically-acceptable salts to
ease its commercial manufacturing and marketing of the tablet form of the
therapeutic amlodipine.").
In addition, we emphasize that, although secondary considerations
such as unexpected results must be taken into account, they do not
necessarily control the obviousness conclusion. See Sud-Chemie, Inc. v.
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Multisorb Technologies, Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009)
("[E]vidence of unexpected results and other secondary considerations will
not necessarily overcome a strong prima facie showing of obviousness");
Pfizer, Inc., 480 F.3d at 1372 ("[T]his secondary consideration does not
overcome the strong showing of obviousness in this case. Although
secondary considerations must be taken into account, they do not necessarily
control the obviousness conclusion.").
Here, the case of obviousness established by the Examiner is so strong
that when the teachings of the reference are weighed against Appellants'
alleged unexpected results, the preponderance of the evidence of record still
weighs in favor of a conclusion of obviousness.
The decision of the Examiner is affirmed.
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
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