Ex Parte Termin et al

Board of Patent Appeals and Interferences

Mar 27, 2007

10192055 (B.P.A.I. Mar. 27, 2007)

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for publication and is not binding precedent of the Board.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
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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).
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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-
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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).
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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
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Appeal No. 2006-2573
Application No. 10/192,055

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