Ex Parte Singh et al

Patent Trial and Appeal Board

Feb 16, 2017

12487486 (P.T.A.B. Feb. 16, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/487,486 06/18/2009 Rajinder Singh 09-570-US-CON13 7280
84067 7590 02/16/2017
McDonnell Boehnen Hulbert & Berghoff LLP
300 South Wacker Drive
Chicago, IL 60606
EXAMINER
BALASUBRAMANIAN, VENKATARAMAN
ART UNIT PAPER NUMBER
1624
MAIL DATE DELIVERY MODE
02/16/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJINDER SINGH, ANKUSH ARGADE, HUI LI,
SOMASEKHAR BHAMIDIPATI, DAVID CARROLL,
CATHERINE SYLVAIN, JEFFREY CLOUGH, and HOLGER KEIM1
Appeal 2015-004965
Application 12/487,486
Technology Center 1600
Before MELANIE L. McCOLLUM, RICHARD J. SMITH, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a
2,4 pyrimidinediamine compound. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 According to Appellants, the real party in interest is Rigel Pharmaceuticals,
Inc. (Appeal Br. 2.)
Appeal 2015-004965
Application 12/487,486
STATEMENT OF THE CASE
Claims on Appeal
Claims 35—40 and 45—50 are on appeal. (Claims Appendix, Appeal
Br. 18—27.) Claim 35 reads in pertinent part:
35. A 2,4 pyrimidinediamine compound of the structural formula
R6
or in the form of a salt or N-oxide thereof, in which
Y is selected from the group consisting of S, SO and SO2;
Z is selected from the group consisting of NH and NR35;
R2 is
OR31
a) ■ndently of the others, methyl
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yy
or
yy in which each R31 is, independently of the others,
methyl or (C1-C6) alkyl and yy is 1-6, or
C)
each R35 is, independently of the others, selected from the group
consisting of hydrogen and R8, or, alternatively, two R35 bonded to the same
carbon atom are taken together to form an oxo (=0), NH or NR38 group and
the other two R35 are each, independently of one another, selected from the
group consisting of hydrogen and R8;
Examiner’s Rejections
1. Claims 35—40 and 45—50 stand rejected on the ground of nonstatutory
obviousness-type double patenting over claims 1, 2, 6—9, 12—17, 19—22, 24,
26, and 28 ofU.S. Patent No. 7,517,886.2 (Ans. 2-7.)
2. Claims 35—40 and 45—50 stand rejected on the ground of nonstatutory
obviousness-type double patenting over claims 1, 3—6, 9-12, and 14—16 of
U.S. Patent No. 7,557,210.3 {Id. at 7-11.)
2 US 7,517,886 B2, issued Apr. 14, 2009 (“the ’886 patent”).
3 US 7,557,210 B2, issued July 7, 2009 (“the ’210 patent”).
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3. Claims 35—40 and 45—50 stand rejected on the ground of nonstatutory
obviousness-type double patenting over claims 1, 3—7, and 13—21 of U.S.
Patent No. 7,498,435.4 (Id. at 11-15.)
4. Claims 35—40 and 45—50 stand rejected on the ground of nonstatutory
obviousness-type double patenting over claims 1, 2, 4—8, and 15—23 of U.S.
Patent No. 7,812,029.5 (Id. at 15—34.)
5. Claims 35—38, 40, and 45—50 stand provisionally rejected on the
ground of nonstatutory double patenting over claims 1—6, 8, and 51 of
copending Application No. 13/442,480.6 (Id. at 34—35.)
FF 1. Claim 1 of the ’886 patent and claim 1 of the ’029 patent recite
a method of treatment comprising the administration of a compound
according structural formula (I):
wherein L1 and L2 are each a direct bond. (’886 patent, col. 539-40; ’029
patent, col. 543.)
Claim 1 of the ’480 application claims a 2,4 pyrimidinediamine
compound according to the same structure shown above as the ’886 patent
and the ’029 patent, with L1 and L2 each a direct bond. (Ans. 75.)
4 US 7,498,435 B2, issued Mar. 3, 2009 (“the ’435 patent”).
5 US 7,812,029 Bl, issued Oct. 12, 2010 (“the ’029 patent”).
6 US Patent Application No. 13/442,480 (“the ’480 application”).
FINDINGS OF FACT
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FF 2. Claim 1 of the ’210 patent claims a compound according to
structural formula (I):
(’210 patent, col. 417.)
FF 3. Claim 1 of the ’435 patent claims a compound of formula I:
i
Except where noted, we adopt the Examiner’s findings and
conclusions as set forth in the Final Action dated April 21, 2014 (Final Act.
2 46) and Examiner’s Answer (Ans. 2—76). We discern no error in the
Examiner’s rejections for obviousness-type double patenting.
All of the claims on appeal are subject to nonstatutory (obviousness-
type) double patenting rejections, and the issues with respect to each
rejection primarily relate to the moieties R2 and R4.7 (See FF 1—3.) Except
with respect to claims 36, 37, and 39 that are separately argued, we limit our
consideration of the rejections to claim 35.
7 R2 is sometimes referred to as the indazoyl core or group and R4 is
sometimes referred to as the benzoxazinone core or group.
F.
E
(’435 patent, col. 462.)
DISCUSSION
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Application 12/487,486
Issue
Whether a preponderance of evidence of record supports the
Examiner’s rejections on the ground of nonstatutory obviousness-type
double patenting.
Analysis
Rejection No. 1
The Examiner finds that “the genus of compounds claimed in the
instant invention is also claimed in the claims of [the ’886 patent].” (Ans.
3.) In addition, the Examiner finds that “[t]he definition of R2 and R4 of
claim 1 of [the ’886 patent], which can be [the] same or different, is
monosubstituted, disubstituted or trisubstituted phenyl or heteroaryl, the
choice of which is limited to 34 [sic 57] choices.” {Id. at 4.) The Examiner
also points to dependent claims of the ’886 patent as providing guidance to
choose R2 and R4 as claimed. (Id. at 5.)
Regarding the selection of R4, the Examiner points to a number of
species of claim 28 of the ’886 patent, and particularly species 7.4.39
illustrated below:
N2-(3,5-dichloro-4-hydroxypheny3)-N4-(2,2-difluoro-3-oxo-4H-benz[lJ4]oxazin-6-yl)-5-fluoro-2J4-
pyrimidinediaraine
(Id.) The Examiner explains that “[i]t would be obvious to one trained in
the art to substitute the oxygen of benzooxazine ring with a sulfur and arrive
at the analogous compound.” (Id.) In particular, the Examiner points to
claim 1 of the ’886 patent as reciting the equivalency of benzothiazine with
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benzoxazine (i.e., “each Y is independently selected from the group
consisting of O, S and NH”). (Id. at 6; ’886 patent, col. 545.)
Regarding the selection of R2, the Examiner finds that choices of
compounds within claim 1 of the ’886 patent include R2 choices that are
positional isomers of R2 as presently claimed, and thus not patentably
distinct absent evidence of superior or unexpected properties. (Id. at 7.)
The Examiner also provides several specific examples of the
structural similarity between the compounds of the ’886 patent claims and
the compounds claimed by Appellants. For example, the structure of the
first species of claim 21 of the ’886 patent is
o
(Ans. 40-41.) As the Examiner notes, there is only one variation
(oxygen/sulfur), and that is encompassed by the previously discussed
equivalency of benzothiazine with benzoxazine. (Id.)
The Examiner also points to numerous species of claim 28 of the ’886
patent as “clearly showing] the suitability of indazoyl core at 2-position as
choice of R2 and benzoxazinone core as choice of R4,” and that one methyl
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group in the benzoxazinone core, as claimed, is clearly taught. {Id. at 45—
53.)
Appellants argue hindsight, and particularly “[t]hat the examiner has
identified particular modifications of the cited patent claims that generate
compounds of the present claims is indicative of hindsight reasoning.”
(Appeal Br. 8.) Appellants argue further that only one choice of the 57
choices of claim 1 of the ’886 patent encompasses R4 of the present claims,
with other choices defining “genera that merely overlap with the R4 genus
defined in the present claim 35.” {Id. at 11.) Appellants also argue that
“when R2 is mono-, di-, or tri-substituted phenyl, the genus of ’886 claim 1
is not [the] same as that of present claim 35.” {Id.)
Appellants also argue that the dependent claims of the ’886 patent do
not provide guidance to the presently defined R2 and R4 moieties. (Id. at 11—
12.) Furthermore, Appellants argue that the Examiner’s selection of
compounds of claims 21 and 28 of the ’886 patent is based on structural
similarity to claimed compounds, and thus hindsight, and that claim 1 of the
’886 patent does not demonstrate equivalency of benzoxazine and
benzothiazine. {Id. at 12; see also Reply Br. 2 4.) Finally, Appellants point
to Otsuka Pharm. Co., Ltd. v. Sandoz, Inc., 678 F.3d 1280 (Fed. Cir. 2012)
(“Otsuka”) to argue that “mere structural similarity of the compounds relied
upon by the examiner is in itself insufficient.”8 (Ans. 13—14.)
8 Appellants also argue that it was improper for the Examiner to refer to the
disclosure of the ’886 patent. (Appeal Br. 14.) While we agree that the
disclosure may not be used as prior art, we find no error in the Examiner’s
reference to the disclosure of the ’886 patent. See In re Vogel, 422 F.2d 438,
441 (CCPA 1970); In re Basell Poliolefine Italia S.P.A., 547 F.3d 1371,
1378-79 (Fed. Cir. 2008).
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We find that the Examiner has the better position. The existence of
structural similarity between compounds of claim 35 and compounds
claimed in the ’886 patent, as explained by the Examiner, along with a
reason or motivation to make the claimed compounds, creates a prima facie
case of obviousness, with the burden then falling on Appellants to rebut that
prima facie case.9 See In re Dillon, 919 F.2d 688, 692—93 (Fed. Cir. 1990).
Moreover, with respect to reason or motivation to make the claimed
compounds, “it is sufficient to show that the claimed and prior art
compounds possess a ‘sufficiently close relationship ... to create an
expectation’. . . that the new compound will have ‘similar properties’ to the
old.” Aventis Pharma Deutschland GmbHv. Lupin, Ltd., 499 F.3d 1293,
1301 (Fed. Cir. 2007) (quoting In re Dillon, 919 F.2d at 692).
Based on the sufficiently close relationship between the presently
claimed compounds and compounds claimed in the ’886 patent, as explained
by the Examiner, we find that the claims of the ’886 patent provide the
motivation to make the claimed compounds in the expectation that they
would have similar properties. See Dillon, 919 F.2d at 693. Accordingly,
we find that the Examiner has shown a sufficient structural similarity and
close relationship to establish a prima facie case of obviousness-type double
patenting, and that Appellants have not met their burden of rebutting that
prima facie case.
9 An obviousness-type double patenting analysis is generally analogous to an
obviousness analysis under 35 U.S.C. § 103. See, e.g., Abbvie Inc. v.
Mathilda and Terence Kennedy Institute of Rheumatology Trust, 764 F.3d
1366, 1378—79 (Fed. Cir. 2014) (citing cases).
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We find that the Examiner has shown the specific guidance in claims
of the ’886 patent regarding the selection of R2 and R4, and the equivalency
of benzoxazine and benzothiazine. Furthermore, any concern regarding
hindsight bias is overcome because the Examiner points to specific claims of
the ’886 patent, and compounds recited in the ’886 patent claims, that give a
reason or motivation to make the claimed compounds. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Moreover, Appellants
adduce no evidence that the Examiner’s findings were beyond the level of
ordinary skill in the art at the time of invention, nor do they point to any of
the Examiner’s findings that could have been taken only from Appellants’
Specification.
Appellants’ reliance on Otsuka is also unpersuasive, at least because
the “mere structural similarity” in Otsuka refers to the selection of the lead
compound, which is inapt in a double patenting analysis,10 and the fact that
the court’s double patenting conclusion relied upon evidence and expert
testimony, which is lacking in the present appeal. See Otsuka, 678 F.3d at
1292, 1297-99; see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“[attorney’s argument in a brief cannot take the place of evidence.”).
The Examiner has established a prima facie case of nonstatutory
double patenting and, although Appellants point to certain differences
between the respective compounds and advance certain arguments,
Appellants do not sufficiently rebut the prima facie case, such as by showing
that the claimed compounds have unexpectedly improved properties
10 We note Appellants’ acknowledgement that the Examiner’s reference to a
lead compound analysis is inapt. (Reply Br. 5—6.)
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compared to the compounds claimed in the ’886 patent. See Dillon, 919
F.2d at 692-93.
Rejection No. 2
The Examiner finds that claim 1 of the ’210 patent discloses 34
choices for R2 and R4, several of which meet the scope of the claimed R4
choice. (Ans. 10.) Moreover, the Examiner finds that choices of
compounds in claim 1 include R2 choices that are positional isomers of R2 as
presently claimed. (Id.) The Examiner also finds that dependent claims of
the ’210 patent further limit the choice of R2 and R4 and provide guidance to
choose R2 and R4 as presently claimed. (Id.) Furthermore, the Examiner
finds that claim 1 of the ’210 patent (definitions of Y1 and Y2) establishes
the equivalency of a benzoxazine core with a benzothiazine core. (Id. at 57.)
Appellants contest the Examiner’s reference to compound 7.3.988
(and others) from the Specification, assert that the Examiner’s reasoning is
hindsight, and again argue that “benzoxazine and benzothiazine in claim 1
does not teach their equivalence.” (Appeal Br. 14—15.)
Appellants’ arguments are similar to those advanced in connection
with Rejection No. 1, and they are unpersuasive for the reasons set forth
above in connection with the ’886 patent. The Examiner has established a
prima facie case of nonstatutory double patenting and, although Appellants
point to certain differences between the respective compounds and advance
certain arguments, Appellants do not sufficiently rebut the prima facie case,
such as by showing that the claimed compounds have unexpectedly
improved properties compared to compounds claimed in the ’210 patent.
See Dillon, 919 F.2d at 692-93.
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Rejection No. 3
The Examiner’s rejection of claim 35, based on the claims of the ’435
patent, is essentially the same as that set forth in connection with the claims
of the ’886 patent (Ans. 11—15, 57), and Appellants rely on the same
response as advanced in connection with the ’886 patent (Appeal Br. 15).
Accordingly, for the reasons set forth above in connection with Rejection
No. 1, the rejection of claim 35 based on the cited claims of the ’435 patent
is affirmed.
Rejection No. 4
The Examiner’s rejection of claim 35, based on the claims of the ’029
patent, is essentially the same as that set forth in connection with the claims
of the ’886 patent (Ans. 15—34, 57), and Appellants rely on the same
response as advanced in connection with the ’886 patent (Appeal Br. 15).
Accordingly, for the reasons set forth above in connection with Rejection
No. 1, the rejection of claim 35 based on the cited claims of the ’029 patent
is affirmed.
Rejection No. 5
The Examiner finds that the pyrimidine compound of formula I of
claim 35 includes a sub genus of the pyrimidine compound in independent
claim 1 of the ’480 application, and that “[t]he R4 choice in both cases is
[the] same. When R2 choice is choice b [of instant claim 35], then
compounds claimed by [the ’480 application] include [the] instant
compounds.” (Ans. 35.) Appellants argue that “it is insufficient basis for a
double patenting rejection that the rejected claim merely be a subgenus of a
claim over which it is rejected as obvious.” (Appeal Br. 16.)
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The Examiner’s rejection is not based solely on the subgenus nature
of claim 35. (Ans. 34—35.) Moreover, we find that Appellants’ argument is
insufficient to overcome the prima facie case of obviousness-type double
patenting set forth by the Examiner for the reasons set forth above. See
Dillon, 919 F.2d at 692—93. Accordingly, the rejection of claim 35 based on
the cited claims of the ’480 application is affirmed.
Claims 36 and 37
Claim 36 depends on claim 35 and recites that R4 is
claim 37 depends on claim 35 and recites that R4 is
and in both claims each R35 is H or CH3. (Appeal Br. 21.)
Appellants argue that claims 36 and 37 are “non-obvious over the
claims of the cited patents and application because they are directed to
compounds in which Y in R4 is —S(0)2—, and the examiner has not even
alleged that such compounds are obvious over the claims of the cited patents
and application. And there is no basis in the claims themselves that render
such compounds obvious.” (Appeal Br. 16.)
We are not persuaded. Claims 36 and 37 are included in Rejection
Nos. 1—5. (See Ans. 2, 7, 11, 15, and 34.) Moreover, claim 1 of the cited
patents and application provide that Y1 (or Y) in R4 can be SO2. (See ’886
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patent, col. 545; ’210 patent, col. 419; ’435 patent, col. 462; ’029 patent, col.
548; Ans. 75.) Accordingly, for the reasons set forth above in connection
with claim 35 and these reasons, the rejections of claims 36 and 37 are
affirmed.
Claim 39
Claim 39 depends on claim 35 and recites that R2 is
in which each R31 is, independently of the others, methyl or (C1-C6) alkyl.
(Appeal Br. 21.) Appellants argue that “the examiner has not even alleged
that such compounds are obvious over the claims of the cited patents and
application. And there is no basis in the claims themselves that render such
compounds obvious.” (Id. at 16.)
We are not persuaded. Claim 39 is included in Rejection Nos. 1^4.11
Moreover, R2 in each claim 1 of the respective patent claims includes tri-
substituted phenyl with R8 groups, R8 is defined as including —OR"
substituted with R" or R;\ and R" includes (C1-C6) alkyl. (See ’886 patent,
col. 540-41; ’210 patent, col. 417; ’435 patent, col. 462—64; ’029 patent, col.
543 44.) Accordingly, for the reasons set forth above in connection with
claim 35 and these reasons, the rejections of claim 39 are affirmed.
11 The Examiner’s rejection of claim 39 over the claims of the ’480
application was withdrawn in the Answer. (Ans. 74.)
OR31
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Conclusions of Law
A preponderance of evidence of record supports the Examiner’s
conclusion that claim 35 is unpatentable on the ground of nonstatutory
obviousness-type double patenting over the cited claims of the ’886 patent,
the ’210 patent, the ’435 patent, the ’029 patent, and the ’480 application.
Claims 38, 40, and 45—50 were not separately argued and fall with claim 35.
A preponderance of evidence of record supports the Examiner’s
conclusion that claims 36 and 37 are unpatentable on the ground of
nonstatutory obviousness-type double patenting over the cited claims of the
’886 patent, the ’210 patent, the ’435 patent, the ’029 patent, and the ’480
application.
A preponderance of evidence of record supports the Examiner’s
conclusion that claim 39 is unpatentable on the ground of nonstatutory
obviousness-type double patenting over the cited claims of the ’886 patent,
the ’210 patent, the ’435 patent, and the ’029 patent.
SUMMARY
We affirm the rejections of all claims on appeal.
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
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