Ex Parte Termin et alDownload PDFBoard of Patent Appeals and InterferencesMar 27, 200710192055 (B.P.A.I. Mar. 27, 2007) Copy Citation The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board. UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte ANDREAS TERMIN, PETER GROOTENHUIS, DEAN WILSON, VALENTINA MOLTENI and LONG MAO __________ Appeal 2006-2573 Application 10/192,055 Technology Center 1600 __________ ON BRIEF __________ Before SCHEINER, GREEN, and LINCK, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s final rejection of claims 1, 2 and 15. Claim 1 is representative of the claims on appeal, and is attached as Appendix I. Claims 1, 2 and 15 stand rejected under 35 U.S.C. § 103 as being obvious over Kasahara.1 We affirm. 1 Kasahara et al. (Kasahara), WO 92/16527, published October 1, 1992 (as translated). Appeal No. 2006-2573 Application No. 10/192,055 DISCUSSION Kasahara is relied upon for teaching “a generic group of compounds which embraces applicant’s instantly claimed compounds” (Answer 3). The examiner points to formula (I) on page II of Kasahara wherein B is Cr1r2, wherein r1 and r2 together represent cyclopropanol; and A is an aryl or heteroaryl group. Id. The examiner also points to compound II-36 in Table 2. The examiner concludes: It would have been obvious to one having ordinary skill in the art at the time of the invention to select any of the species of the genus taught by the reference, including those instantly claimed, because the skilled chemist would have the reasonable expectation that any of the species of the genus would have similar properties and, thus, the same use as taught for the reference genus as a whole i.e., as fungicidal agents. In other words, one of ordinary skill in the art needs to make only one modification to the reference disclosed compound and arrive at a compound included in the instant claim. One of ordinary skill in the art would have been motivated to select the claimed compounds from the genus in the reference since such compounds would have been suggested by the reference as a whole. It has been held that a prior art disclosed genus of useful compounds is sufficient to render prima facie obvious a species falling within a genus. In re Susi, 440 F.2d 442, 169 USPQ 423, 425 (CCPA 1971), followed by the Federal Circuit in Merck & Co. v. Biocraft Laboratories, 847 F.2d 804, 10 USPQ 2d 1843, 1846 (Fed. Cir. 1989). The reference also teaches formulations comprising the reference compound and water, vegetable oil, etc. as carriers (see page 44 of the English translation of the document). The instantly claimed composition of claims 1 and 2 differs by including a compound, which is structurally analogous to the reference disclosed compound and thus, provides motivation to one of ordinary skill in the art to prepare the structural variants of the 2 Appeal No. 2006-2573 Application No. 10/192,055 reference compounds and the formulations thereof. The preamble is not given any patentable weight as it merely recites an intended use. Id. at 4-5. “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993) (citations omitted). The test of obviousness is “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, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991). Appellants argue that of all of the 338 compounds exemplified by Kasahara, only a single species, II-36, as the r1 and r2 forming the cyclopropyl, and that species has been removed from claim 1 by proviso (Br. 9). Appellants assert “there is no overlap, and so no prima facie case of obviousness was made.” Id. Thus, in order to arrive at the claimed compounds, appellants assert that “[a] large number a variables must be selected or modified with no guidance from the reference.” Id. We do not find Appellants’ arguments to be convincing, and the rejection is affirmed. Appellants are claiming a large genus of compounds, which appears to be a subgenus of the larger prior art genus of Kasahara. Kasahara specifically disclosed only one species, compound II-36, that fell within Appellants’ genus, and disclosed that it has fungicidal activity against apple scab (Example 6, page 73, Table 15, page 76). 3 Appeal No. 2006-2573 Application No. 10/192,055 Admittedly, the claim excludes that species, as it has been carved out by proviso. However, the claims do not exclude obvious variants of that compound, such as a compound having a bromo rather than a chloro on the phenyl ring, or a compound in which ethyl has been substituted for methyl on the pyridinyl ring. As noted by the examiner, the reference teaches a genus (see formula (b) in page 31 of the translation papers) and a species that falls within the genus (see Table 2, compound II-36, the structural formulae of the genus and species are depicted below for convenience): The instant claims exclude a small subgenus, that includes the reference disclosed compound, from the claims, see the proviso statement. The reference however, teaches the functional equivalency of the substituent groups to be alternatives. . . . . Therefore, the reference teaches the equivalency of methyl, ethyl, chloro, fluoro, etc. as all these are taught as alternatives of the ring substituents and thus, the reference clearly suggests compounds that fall within the genus of instant compounds. The necessary motivation to make the structurally analogous compounds of the reference rises from the expectation that compounds, similar in structure will have similar properties and therefor, the same use, i.e., as fungicides. Appellant[s] cite[ ] MPEP § 2144.08 and argue[] that ‘a large number of variables must be selected or modified with no guidance from the reference—the similar structures were already removed by proviso’. This is not found to be persuasive because one of ordinary skill in the art need to select or modify only one of the substituent groups to arrive at the instantly claimed compounds, e.g., 2-ethyl in place of the 2- 4 Appeal No. 2006-2573 Application No. 10/192,055 methyl group disclosed for the reference compound; or 4- bromo in place of the 4-chloro disclosed for the reference compound; etc. Answer, pp. 8-9. Moreover, even without the Kasahara reference’s teaching of equivalency, the ordinary artisan in possession of the disclosed species II-36, which has been specifically shown to have activity against apple scab by Kasahara, would have immediately recognized that another halogen could be substituted for the chloro on the phenyl ring, or that another lower alkyl could be substituted for the methyl group on the pyridinyl, without loss of fungicidal activity. A single such substitution would result in a compound falling within Appellants’ genus. Appellants other arguments are drawn to the use of the compound as a CRF receptor ligand (Br. 5). The claims, however, are not drawn to a method of use, but are drawn to a pharmaceutical composition (claim 1) (which reads on the compound in vegetable oil or water, which are taught by Kasahara), or the compound (claim 15). 5 Appeal No. 2006-2573 Application No. 10/192,055 SUMMARY Because the examiner has set forth a prima facie case of obviousness, the rejection is affirmed. AFFIRMED TONI R. SCHEINER ) Administrative Patent Judge ) ) ) ) BOARD OF PATENT LORA M. GREEN ) Administrative Patent Judge ) APPEALS AND ) ) INTERFERENCES ) NANCY J. LINCK ) Administrative Patent Judge ) LG 6 Appeal No. 2006-2573 Application No. 10/192,055 BRISTOL-MYERS SQUIBB COMPANY PATENT DEPARTMENT P.O. BOX 4000 PRINCETON NJ 08543-4000 7 Copy with citationCopy as parenthetical citation