Ex Parte Saveliev et al

Patent Trial and Appeal Board

Dec 9, 2015

12249584 (P.T.A.B. Dec. 9, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/249,584 10/10/2008
91007 7590 12/11/2015
Michael Best & Friedrich LLP (Promega)
100 East Wisconsin A venue
Suite 3300
Milwaukee, WI 53202
FIRST NAMED INVENTOR
Sergei Saveliev
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.
016026-9491 USOl 2003
EXAMINER
HAQ, SHAFIQUL
ART UNIT PAPER NUMBER
1678
NOTIFICATION DATE DELIVERY MODE
12/11/2015 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):
madipdocket@michaelbest.com
heather.gerard@promega.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SERGEI SA VELIEV,
DANIEL SIMPSON, and KEITH V. WOOD
Appeal2013-004583
Application 12/249,584
Technology Center 1600
Before DONALD E. ADAMS, DEMETRA J. MILLS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL 1
This appeal under 35 U.S.C. § 134(a) involves claims 1---6, 9, 10, and
24 (App. Br. 4). Examiner entered rejections under 35 U.S.C. § 102(b) and
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Appellants' "invention provides surfactant compounds useful for
aiding the solubilization, digestion, analysis, and/or characterization of
1 Appellants identify the Real Party in Interest as "Promega Corporation"
(App. Br. 2).
Appeal2013-004583
Application 12/249,584
biological material, for example proteins" (Spec. 3: 3--4). Claims 1 and 3
are representative and reproduced below.
1. A compound of formula 1:
wherein:
Q is (C1-C6)alkyl, (C6-C10)aryl, (C5-C 10)heteroaryl, or (C6-C10)aryl-
NH(C1-C6)alkyl;
Y is 0 S NH -X-C(=O)- -C=N- carbonyl or -0-C(=Z)-X-·
' ' ' ' ' ' '
Z is 0 or S;
A is aryl, aryl(C1-C6)alkyl, heteroaryl, or a direct bond;
X is 0, NH, or S;
Vis C orN;
Mis H, an alkali metal, or tetra(C1-C20)alkylammonium;
Lis -X-C(=Z)-X- or a direct bond;
R1 is (C6-C16)aryl, (C5-C10)heteroaryl, or absent when Vis N;
R2 and R3 are each independently Hor (C1-C20)alkyl; or
R2 and R3 together form a 3-8 membered carbocycle ring, or a 3-8
membered heterocyclic ring comprising 1, 2, or 3 N(Rx), S, or O; or
-V(R2)(R3)-L-R1 is optionally---O-R1 when A is aryl;
wherein any alkyl, alkenyl, aryl, or heteroaryl, carbocyclic ring, or
heterocyclic ring, is optionally substituted with one or more (e.g., 1, 2, 3, 4,
or 5) (C1-C2o)alkyl, (CrC20)alkenyl, (CrC1o)alkynyl, (C3-C1o)cycloalkyl,
(C1-C20)alkoxy, (C1-C20)alkylcarbonyl, (C1-C20)alkylcarboxyl, halo,
hydroxyl, -C02Rx, -S02Rx, -S03Rx, nitro, amino, N(Rx)2, mercapto, (C1-
C20)alkylthio, (C6-C16)aryl, (C6-C30)arylthio, trifluoromethyl, =O, heteroaryl,
or heterocycle groups; provided that Q is not substituted with C02H; and
each Rx is independently H, (C1-C6)alkyl, (C6-C16)aryl, or (C1-
C6)alkyl-( C6-C16)aryl;
or a salt thereof.
3. The compound of claim 1 wherein Y is---0-C(-Z)-X-, Xis NH, and
Z is 0.
2
Appeal2013-004583
Application 12/249,584
Claims 1, 2, 4---6, and 24 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Ross. 2
Claims 1, 2, 4---6, and 24 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Bouvier. 3
Claims 1, 2, 4---6, 9, and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Epstein. 4
Claims 1, 2, 4---6, and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hellberg. 5
Claims 1, 2, and 4--6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nollet. 6
Claims 1, 2, and 4---6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Thomthwaite. 7
Claims 1 and 3---6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Mazzeo. 8
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Nollet and Mazzeo.
2 Andrew R. S. Ross, et al., Identification of proteins from two-dimensional
polyacrylamide gels using a novel acid-labile surfactant, 2 Proteomics 928-
936 (2002).
3 Bouvier et al., WO 03/102225 Al, published Dec. 11, 2003.
4 W. W. Epstein et al., The Synthesis of a Photolabile Detergent and Its Use
in the Isolation and Characterization of Protein, 119 Analytical
Biochemistry 304--312 (1982).
5 Per-Erik Hellberg et al., Cleavable Surfactants, 3 Journal of Surfactants
and Detergents 81-91 (2000).
6 Nollet et al., EF 0 202 698 Al, published Nov. 26, 1986.
7 Thomthwalte et al., EP 0 227 194 Al, published July 1, 1987.
8 Mazzeo et al., US 6,090,250, issued July 18, 2000.
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Appeal2013-004583
Application 12/249,584
Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner's finding that Ross or Bouvier teach Appellants' claimed
invention?
FACTUAL FINDINGS (FF)
FF 1. Appellants define:
The term 'aryl' [as] includ[ing] groups, including 5- and
6-membered single-ring aromatic groups that may include from
zero to four heteroatoms, for example, benzene, phenyl,
pyrrole, furan, thiophene, thiazole, isothiaozole, imidazole,
triazole, tetrazole, pyrazole, oxazole, isooxazole, pyridine,
pyrazine, pyridazine, and pyrimidine, and the like.
Furthermore, the term "aryl" includes multi cyclic aryl groups,
e.g., tricyclic, bicyclic, e.g., naphthalene, benzoxazole,
benzodioxazole, benzothiazole, benzoimidazole,
benzothiophene, methylenedioxyphenyl, quinoline,
isoquinoline, napthridine, indole, benzofuran, purine,
benzofuran, deazapurine, or indolizine. Those aP;l groups
having heteroatoms in the ring structure may also be referred to
as "aryl heterocycles", "heterocycles," "heteroaryls" or
"heteroaromatics". The aromatic ring can be substituted at one
or more ring positions with such substituents as described
above.
(Spec. 17: 11-21.)
FF 2. Appellants disclose that:
The heterocyclic ring can include one or more, e.g., 1, 2, or 3
heteroatoms, including N, S, 0, or a combination thereof. A
nitrogen of the heterocyclic ring can be substituted with an H,
or an substituent, for example, a (C 1-C6)alkyl, a (C6-C 16)aryl, or
a (C1-C6)alkyl(C6-C 16)aryl group. Examples ofheterocyclic
rings include, but are not limited to, pyrrole, furan, thiophene,
thiazole, isothiaozole, imidazole, triazole, tetrazole, pyrazole,
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Appeal2013-004583
Application 12/249,584
oxazole, isooxazole, pyridine, pyrazine, pyridazine, and
pyrimidine.
(Spec. 27: 13-19.)
FF 3. Ross' Figure 1 is reproduced below:
Cl~-,,,.. c1 ............. _......~ .... -............................... x ... .(J""s::
1'•{)W•,,,,..., I
c---··f"""',.....__.....,. __ ~,,., ""·
<>... i>
._.---._.,..,,,,,,...--,~x... <, .. ...
(Bouvier 17: 1-8.)
FF 6. Examiner finds that the compounds illustrated on page 17 of Bouvier
"read on the compound of [Appellants'] claim[] 1" when "M=Na, Q=(C 1-
C6)alkyl, Y=O, A=direct bond, V=C, L=direct bond, R[1]=C5 heteroaryl
substituted with C1=C10 alkyl, R
2=H and R3=H" (Ans. 2-3). In this regard,
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Appeal2013-004583
Application 12/249,584
Examiner notes that the heterocyclic ring of Appellants' claim 1 "can be
optionally substituted with one or more C1-C20 alkyl" (id. at 3).
ANALYSIS
Examiner finds that each of Ross and Bouvier teach Appellants'
claimed invention (Ans. 2-3). In support of the rejections, Examiner finds
that Appellants disclose "that aryl groups having heteroatoms in the ring
structure may also be referred to as 'aryl heterocycles, 'heteorocylces' [sic],
'heteroryls' or 'heteroaromatic'. Therefore, according to [Appellants']
[S]pecification 'heteroaryls' can be referred [to] as 'heterocycles"' (Ans. 8
and 10). We are not persuaded.
As Appellants explain, Ross and Bouvier both fail to teach a
compound, within the scope of Appellants' claimed invention, wherein "R[ 1]
is (C6-C16) aryl, (C5-C10) heteroaryl or is absent when Vis N" (App. Br. 5).
In this regard, Appellants explain that a "' [h ]eteroaryl' is a subset of
'heterocycle' and so it is proper to refer to a 'heteroaryl' as a 'heterocycle.'
[] Merely referring to a heteroaryl as a heterocycle does not mean that any
heterocycle falls within the smaller genus of 'heteroaryl"' (Reply Br. 2; see
FF 1-2). We agree. Notwithstanding Examiner's assertion to the contrary,
Ross and Bouvier do not teach a compound comprising a heteroaryl (see FF
3 and 5; cf FF 4 and 6).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner's finding that Ross or Bouvier teach Appellants' claimed
invention.
The rejection of claims 1, 2, 4--6, and 24 under 35 U.S.C. § 102(b) as
anticipated by Ross is reversed.
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Appeal2013-004583
Application 12/249,584
The rejection of claims 1, 2, 4--6, and 24 under 35 U.S.C. § 102(b) as
anticipated by Bouvier is reversed.
Obviousness:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 7. Epstein and Hellberg each disclose the following compound:
(Epstein 305: Scheme 1, compound 1; Hellberg 89: Scheme 16.)
FF 8. Examiner finds that the compound disclosed by Epstein or Hellberg
(see FF 7) makes obvious the compound of Appellants' claim 1 when
"M=Na, Q=(C6-C 10)aryl, Y=carbonyl, A=direct bond, V=C, L=direct bond,
R1=(C6-C16)aryl, R
2 and R3= [Hor] C1-C20 alkyl" (Ans. 3--4).
FF 9. Nollet discloses a compound having the following formula:
0
R - o - ~ - o -- SCIJ-M+ CO
(Nollet 2: 1-9.) Nollet discloses that "R is an alkyl group and M+ represents
a cation" (id. at 11. 11-12).
FF 10. Examiner finds that Nollet's compound (see FF 9) makes obvious
the compound of Appellants' claim 1 when "M=Na, Q=(C6-C10)aryl, Y= -0-
C(=Z)-X wherein Z=O and X=O, A=direct bond, V=C, L=direct bond,
R1=(C6-C16)aryl, R
2 and R3= H" (Ans. 5).
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Appeal2013-004583
Application 12/249,584
FF 11. Thomthwaite discloses a compound having the following formula:
x, x .... .. ·"-
RCOO * 503"
X3 X4
(Thomthwaite 3: 1-9.) Thomthwaite discloses that "Risa substituted or
unsubstituted phenyl, C1-C18, preferably CrC10 alkyl or alkoxyl radical, X1
to X 10 are equal or different, and selected from the group of hydrogen,
halogen, C1-C4 alkyl and C1-C4 alkoxyl radicals, and Mis an alkali metal, an
alkaline earth metal or an ammonium group" (id. at 11. 10-15);
FF 12. Examiner finds that Thomthwaite's compound (see FF 12) makes
obvious the compound of Appellants' claim 1 when "M=Na, Q=(C6-
C10)aryl, Y= -X-C(O)- wherein X=O, A=direct bond, V=C, L=direct bond,
R1=(C6-C16)aryl, R
2 and R3= H" (Ans. 5).
FF 13. Mazzeo discloses the following compound:
0
- !i Ii
,, ,-'"',_ ,,.,,.-""-.., ~ /'"~ ,,--U )-,,N , --~
,.,,.- ~ ~_/ ----~ '-" I: ':;-;;;;'.' OH
f ""' " 0 I H
o=s-o
' 0
(S}·N°DECOXYCARSONYLCYSTDC ACm H
(Mazzeo, FIG. 3A20)
FF 14. Examiner finds that Mazzeo's compound (see FF 13) makes obvious
the compound of Appellants' claim 1 when "M=H, Q=(C1-C6)alkyl
substituted with ---C02R x wherein Rx is [H or] C 1-C6alkyl, Y = -0-C( =Z)-X
wherein Z=O and X=NH, A=direct bond, V=C, L=direct bond, R1=(C6-
C16)aryl, R2 and R3= H" (Ans. 6).
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Appeal2013-004583
Application 12/249,584
ANALYSIS
The rejection over Epstein, Hellberg, Nollet, Thornthwaite or Mazzeo:
Based on Epstein, Hellberg, Nollet, Thomthwaite, or Mazzeo
Examiner concludes that, at the time Appellants' invention was made, it
would have been prima facie obvious to substitute the alkyl of Epstein,
Hellberg, Nollet, Thomthwaite, or Mazzeo which corresponds to Appellants'
R1 group, with a (C6-C16) aryl "because common chemical knowledge
suggest[ s] that alkyl, saturated cyclo lower alkyl, and phenyl are all well[-
]known substituents" (Ans. 3---6; see FF 7-14). In support of this conclusion
Examiner directs attention to Ex parte Koster, 136 USPQ 75, 76 (BPAI
1961) ("Saturated cyclo lower alkyl and phenyl radicals are so extremely
common that we believe that any chemist of ordinary competence would
readily realize that said radicals might be substituted for one of the alkyl
radicals of [the prior art] compounds"). We are not persuaded.
There are no per se rules ofunpatentability. See In re Ochiai, 71 F.3d
1565, 1572 (Fed. Cir. 1995) ("The use of per se rules, while undoubtedly
less laborious than a searching comparison of the claimed invention-
including all its limitations-with the teachings of the prior art, flouts section
103 and the fundamental case law applying it."); In re Cofer, 354 F.2d 664,
667 (CCPA 1966) ("[I]t is facts appearing in the record, rather than prior
decisions in and of themselves, which must support the legal conclusion of
obviousness under 35 U.S.C. § 103."). Each claimed invention must be
considered on its own merits and in every instance, the test for patentability
under § 103 is the same: "whether the teachings of the prior art, taken as a
whole, would have made obvious the claimed invention." In re Gorman,
933 F.2d 982, 986 (Fed. Cir. 1991).
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Appeal2013-004583
Application 12/249,584
As Appellants explain, Examiner failed to establish an evidentiary
basis on this record to support a conclusion "that saturated alkyl substituents
and aromatic substituents are well-known substituents according to common
chemical knowledge and that such a substitution would have been obvious to
one of ordinary skill in the art" as it applies to the compound disclosed by
Epstein (Reply Br. 2; see App. Br. 7-8).
To imbue one of ordinary skill in the art with knowledge of the
invention in suit, when no prior art reference or references of
record convey or suggest that knowledge, is to fall victim to the
insidious effect of a hindsight syndrome wherein that which
only the inventor taught is used against its teacher.
W.L. Gore &Associates, Inc. v. Garlock, Inc., 721F.2d1540, 1553 (Fed.
Cir. 1983). See App. Br. 7 ("This rejection is based on hindsight rather than
the teachings of the art").
On this record, Examiner failed to establish an evidentiary basis to
support a conclusion of obviousness. See In re Kahn, 441 F .3d 977, 988
(Fed. Cir. 2006) ("rejections 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").
The rejection over the combination of Nollet and Mazzeo:
Based on the combination of Nollet and Mazzeo, Examiner concludes
that, at the time Appellants' invention was made, it would have been prima
facie obvious to substitute a carbamate linkage, as suggested by Mazzeo, for
the ester linkage ofNollet's compound (Ans. 7). Examiner, however, failed
to establish that the combination of Mazzeo and Nollet makes up for the
deficiencies in each of Mazzeo and Nollet discussed above.
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Application 12/249,584
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claims 1, 2, 4--6, 9, and 24 under 35 U.S.C. § 103(a)
as unpatentable over Epstein is reversed.
The rejection of claims 1, 2, 4--6, and 9 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Helberg is reversed.
The rejection of claims 1, 2, and 4--6 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nollet is reversed.
The rejection of claims 1, 2, and 4--6 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Thomthwaite is reversed.
The rejection of claims 1 and 3---6 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mazzeo is reversed.
The rejection of claim 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Nollet and Mazzeo is reversed.
REVERSED
tc
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