Ex Parte Teuber et al

Board of Patent Appeals and Interferences

Jul 22, 2009

10546437 (B.P.A.I. Jul. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LENE TEUBER and JANUS S. LARSEN
____________

Appeal 2009-0007231
Application 10/546,437
Technology Center 1600
____________

Decided:2 July 22, 2009
____________

Before DONALD E. ADAMS, ERIC GRIMES, and FRANCISCO C.
PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

1 Heard May 12, 2009.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-000723
Application 10/546,437

This appeal under 35 U.S.C. § 134 involves claims 1-9 and 14-18, the
only claims pending in this application. We have jurisdiction under 35
U.S.C. § 6(b).

STATEMENT OF THE CASE
The claims are directed to a compound (claims 1-6 and 15-18); a
composition (claim 7); and a method for the treatment or alleviation of
anxiety disorders (claims 8, 9, and 14). Claim 1 is illustrative:
1. A compound of general formula (I):

or an N-oxide thereof, or any of its steric isomers or any mixture of its
steric isomers,
or a pharmaceutically acceptable salt thereof,
wherein
R represents hydroxyalkyl, alkoxyalkyl, cycloalkoxyalkyl,
cycloalkylalkoxyalkyl, alkenyloxyalkyl, or alkynyloxyalkyl; and
R’ represents thienyl or thiazolyl;
which thienyl or thiazolyl may optionally be substituted with one or
more substituents independently selected from the group consisting of halo,
hydroxy, amino, alkylamino, aminoalkyl, cyano, nitro, trifluoromethyl,
trifluoromethoxy, alkoxy, cycloalkoxy, alkyl, cycloalkyl, cycloalkylalkyl,
alkenyl, and alkynyl.
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The Examiner relies on the following evidence:
Axelsson et al. US 5,360,809 Nov. 1, 1994
Teuber et al. US 5,554,630 Sep. 10, 1996

The rejection presented by the Examiner is as follows:
Claims 1-9 and 14-18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Teuber and/or Axelsson.
We affirm.

CLAIM GROUPING
Appellants provide separate arguments for the following groups of
claims: (I) claims 1, 7-9, and 14; (II) claim 2; (III) claim 3; (IV) claim 4; (V)
claim 5; (VI) claim 6; (VII) claim 15; (VIII) claim 16; (IX) claim 17; and
claim 18. See, generally, App. Br. 10-38. Claims 1-6 and 15-18 are
representative. 37 C.F.R. § 41.37(c)(1)(vii).

PRINCIPLES OF LAW
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992). On appeal to this Board, Appellants must show that the Examiner
has not sustained the required burden. See Ex parte Yamaguchi, 88 USPQ2d
1606, 1608 and 1614 (BPAI 2008) (precedential); Ex parte Fu, 89 USPQ2d
1115, 1118 and 1123 (BPAI 2008) (precedential); Ex parte Catan, 83
USPQ2d 1569, 1570 and 1577 (BPAI 2007) (precedential); Ex parte Smith,
83 USPQ2d 1509, 1512-1514, 1519 (BPAI 2007) (precedential).
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In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court reaffirmed that “when a patent ‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination
is obvious.” Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273
(1976)).
Thus, “when the question is whether a patent claiming the
combination of elements of prior art is obvious” the relevant inquiry is
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id. The Court reasoned
that:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
Id. at 421.
As our reviewing court has stated, “[o]bviousness does not require
absolute predictability of success. . . . For obviousness under § 103, all that
is required is a reasonable expectation of success.” In re O’Farrell, 853
F.2d 894, 903-04 (Fed. Cir. 1988).
[T]o have a reasonable expectation of success, one must be
motivated to do more than merely to “vary all parameters or try
each of numerous possible choices until one possibly arrived at
a successful result, where the prior art gave either no indication
of which parameters were critical or no direction as to which of
many possible choices is likely to be successful.” Similarly,
prior art fails to provide the requisite “reasonable expectation”
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of success where it teaches merely to pursue a “general
approach that seemed to be a promising field of
experimentation, where the prior art gave only general guidance
as to the particular form of the claimed invention or how to
achieve it.”
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)
(quoting O’Farrell, 853 F.2d at 903-04).
As to motivation, while the Supreme Court held that some rationale
must be supplied for a conclusion of obviousness, the Court explicitly
rejected a “rigid approach” to the obviousness question, and instead
emphasized that “[t]hroughout this Court’s engagement with the question of
obviousness, our cases have set forth an expansive and flexible approach.”
KSR, 550 U.S. at 415. The Court also rejected the use of “rigid and
mandatory formulas” as being “incompatible with our precedents.” Id. at
419; see also id. at 421 (“Rigid preventative rules that deny factfinders
recourse to common sense, however, are neither necessary under our case
law nor consistent with it.”).
The Court thus reasoned that the analysis under 35 U.S.C. § 103 “need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id. at 418; see
also id. at 421 (“A person of ordinary skill is . . . a person of ordinary
creativity, not an automaton.”). “In determining whether obviousness is
established by combining the teachings of the prior art, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir.
1995) (internal quotations omitted).
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On several occasions, the Supreme Court has emphasized that the
purpose of § 103 is to preclude removal of existent knowledge from the
public domain. Graham v. John Deere Co., 383 U.S. 1, 6 (1966). Section
103 permits free access to materials already available. The Supreme Court
reemphasized the point, albeit in somewhat of a different context involving
preemption of state law protecting inventions, in Bonito Boats, Inc. v.
Thunder Craft Boats, Inc., 489 U.S. 141, 146 (1989) (Congress may not
“‘authorize the issuance of patents whose effects are to remove existent
knowledge from the public domain, or to restrict free access of materials
already available.’”). KSR again reemphasizes the point in a § 103 context
by noting that a patent which withdraws what is already known into the field
of its monopoly “diminishes the resources available to skillful men” KSR,
550 U.S. at 416 (quoting Great Atlantic & Pacific Tea Co. v. Supermarket
Equipment Corp., 340 U.S. 147, 153 (1950)).
Both the claimed and unclaimed disclosures in a prior art patent are
presumed to be enabled. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314
F.3d 1313, 1355 (Fed. Cir. 2003).

Claim 1:
ISSUE

Would a person of ordinary skill in this art have considered it prima
facie obvious to select CH2OH or CH3OCH2 as the R6 substituent of
Axelsson’s or Teuber’s compounds and a thienyl or thiazolyl for the R13
substituent of Axelsson’s or the R11 substituent of Teuber’s compounds?

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FINDINGS OF FACT
FF 1. Axelsson teaches a compound of the formula:

wherein
X is C or N;
Y is C or N;
R11 is hydrogen, hydroxy, or alkoxy;
R12 and R13 are each independently hydrogen; halogen;
CF3; CN; OH; alkyl; cycloalkyl; cycloalkylalkyl; alkenyl;
alkynyl; alkoxy; phenylalkyl; amino; nitro; sulphamoyl;
pipiridyl; pyrrolidinyl; acyl; CO2H; CO2-alkyl; CO-amino; NH-
CO-alkyl; phenylsulphonyl which may be substituted with
halogen, CF3, CN, OH, alkyl, alkenyl, alkynyl, alkoxy, amino,
or nitro; phenyloxy which may be substituted with halogen,
CF3, CN, OH, alkyl, alkenyl, alkynyl, alkoxy, amino, or nitro;
phenylamino which may be substituted with halogen, CF3, CN,
OH, alkyl, alkenyl, alkynyl, alkoxy, amino, or nitro; or aryl
which may be substituted one or more times with halogen, CF3,
CN, OH, alkyl, cycloalkyl, cycloalkylalkyl, alkenyl, alkynyl,
alkoxy, phenoxy, phenylalkyl, amino, nitro, sulphamoyl,
pipiridy[l], pyrrolidinyl, CO2H, CO2-alkyl, CO-amino, or NH-
CO-alkyl; and
R4, R5, R6 and R7 are each independently hydrogen;
halogen; amino; nitro; CN; CF3 ; COOH; COO-alkyl; alkyl;
acyl; alkoxy; -(CH2)n-OH wherein n is 0, 1,2, or 3; -(CH2)m-O-
alkyl wherein m is 0, 1,2, or 3; -(CH2)o -O-acyl wherein o is 0,
1,2, or 3;
and that if X is N then R4 is absent and that if Y is N then
R7 is absent; or a pharmaceutically-acceptable addition salt
thereof.

(Axelsson, col. 2, ll. 1-43.)

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FF 2. More specifically, Axelsson teaches a compound of the formula:

wherein
X is C;
Y is C;
R4 is hydrogen;
R5 is hydrogen;
R6 is hydroxyalkyl (e.g., -(CH2)n-OH wherein n is 0, 1,2,
or 3);
R7 is hydrogen;
R11 is hydrogen;
R12 is hydrogen; and
R13 is aryl which may be substituted one or more times
with halogen, CF3, CN, OH, alkyl, cycloalkyl, cycloalkylalkyl,
alkenyl, alkynyl, alkoxy, phenoxy, phenylalkyl, amino, nitro,
sulphamoyl, pipiridy[l], pyrrolidinyl, CO2H, CO2-alkyl, CO-
amino, or NH-CO-alkyl.

(Id. and Axelsson, col. 24, ll. 12-58.)

FF 3. Axelsson teaches that

Aryl means a 5- or 6-membered monocyclic group. Such
an aryl group includes, for example, phenyl, oxazol-2-yl,
oxazol-4-yl, oxazol-5-yl, isoxazol-3-yl, isoxazol-4-yl, isoxazol-
5-yl, thiazol-2-yl, thiazol-4-yl, thiazol-5-yl, isothiazol-3-yl,
isothiazol-4-yl, isothiazol-5-yl, 1,2,4-oxadiazol-3-yl, 1,2,4-
oxadiazol-5-yl, 1,2,4-thiadiazol-3-yl, 1,2, 4-thiadiazol 1,2,5-
oxadiazol-3-yl, 1,2,5-oxadiazol-4-yl, 1,2,5-thiadiazol-3-yl, 1,2,
5thiadiazol-4-yl, 1-imidazolyl, 2-imidazolyl, 4-imidazolyl, 1-
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pyrrolyl, 2-pyrrolyl, 3-pyrrolyl, 2-furanyl, 3-furanyl, 2-thienyl,
3-thienyl, 2-pyridyl, 3-pyridyl, 4-pyridyl and tetrazolyl.

(Axelsson, col. 6, 5-16.)

FF 4. Axelsson teaches that “[t]he compounds of the invention possess
valuable activity as calcium channel blockers which make[s] them useful in
the treatment of anoxia, ischemia, psychosis, epilepsy, Parkinsonism,
depression and migraine for example” (Axelsson, col. 1, ll. 5-9).
FF 5. Teuber teaches a compound having the formula:

or a pharmaceutically acceptable salt thereof wherein R3 is

wherein
X is N; or C-R’ wherein R’ is hydrogen or together with R4 forms a
-(NR111)m-C(=O)-, -(NR111)m-CHOH-, or a –N=C- bridge wherein R111 is
hydrogen or alkyl and m is 0 or 1;
one of A, B, C, and D is N and the others are CH;
one of E, F, G, and K is N-R” wherein R" is hydrogen or alkyl and the
others of E, F, G, and K are CH2;
R6 and R7 are independently hydrogen; halogen; amino; nitro;
cyano; acylamino; trif[l]uoromethyl; alkyl; alkoxy; COO-alkyl; acyl;
CH=NOH, CH=NO-alkyl; CH=N-NH-(C=O)-NH2; phenyl which may be
substituted one or more times with alkyl, nitro, halogen, or CF3; or aryl
which may be substituted one or more times with alkyl, phenyl, halogen, or
CF3; or R6 and R7 together forms a (CH2)a-(Z)b-(C=Y)c-(Z’)d-(CH2)e bridge
wherein each of Z and Z’ independently are O, S, or NR’” wherein R’” is
hydrogen or alkyl, Y is O or H2, a and e are each independently 0, 1, 2, or 3
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and b, c, and d are each independently 0 or 1 provided that the sum of a, b, c,
d, and e is not larger than 6; or R6 and R7 together forms a -CH=CH-CH=N-,
-CH=CH-N=CH-, -CH=NCH=CH-, -N=CH-CH=CH-, or =N-S-N=bridge;
R4 is hydrogen; amino; nitro; cyano; halogen; acylamino; phenyl
which may be substituted one or more times with alkyl, amino, halogen, or
CF3 ; aryl which may be substituted one or more times with alkyl, phenyl,
halogen, or CF3; or R4 together with R’ forms a -(NR111)m-C(=O)-,
-NR111)m-CHOH-, or a –N=C-bridge wherein R111 is hydrogen or alkyl, and
m is 1; and
R11 is phenyl which may be substituted one or more times with alkyl,
halogen, or CF3, benzimidazolyl which may be substituted one or more
times with alkyl, halogen, or CF3, or aryl which may be substituted one or
more times with alkyl, phenyl, halogen, or CF3, amino, nitro, cyano,
acylamino, trifluoromethyl; alkoxy; or acyl; provided that at least one of R6
and R7 is other than hydrogen.

(Teuber, col. 2, ll. 1-56.)

FF 6. More specifically, Teuber teaches a compound of the formula:

or a pharmaceutically acceptable salt thereof wherein:

R3 is ;
X is C-R’;
R’ is hydrogen;
R4 is hydrogen;
R6 is alkoxy;
R7 is hydrogen; and
R11 is aryl which may be substituted one or more times
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with alkyl, halogen, or CF3, amino, nitro, cyano, acylamino,
trifluoromethyl; alkoxy; or acyl.

(Id.)
FF 7. Teuber teaches that
Aryl is a 5- or 6-membered heterocyclic monocyclic
group. Such an aryl group includes, for example, oxazol-2-yl,
oxazol-4-yl, oxazol-5-yl, isoxazol-3-yl, isoxazolo-4-yl,
isoxazol-5-yl, thiazol-2-yl, thiazol-4-yl, thiazol-5-yl, isothiazol-
3-yl, isothiazol-4-yl, isothiazol-5-yl, 1,2,4-oxadiazol-3-yl,
1,2,4-oxadiazol-5-yl, 1,2,4-thiadiazol-3-yl, 1,2,4-thiadiazol-5-
yl, 1,2,5-oxadiazol-3-yl, 1,2,5-oxadiazol-4-yl, 1,2,5-thiadiazol-
3-yl, 1,2,5-thiadiazol-4-yl, 1-imidazolyl, 2-imidazolyl, 4-
imidazolyl, 5-imidazolyl, 2-pyrrolyl, 3-pyrrolyl, 2-furanyl, 3-
furanyl, 2-thienyl, 3thienyl, 2-pyridyl, 3-pyridyl, 4-pyridyl.

(Teuber, col. 5, ll. 4-14.)

FF 8. Teuber teaches that “[t]he compounds are useful for the treatment of
various central nervous system disorders such as epilepsy and other
convulsive disorders, anxiety, sleep disorders and memory disorders”
(Teuber, abstract).
FF 9. Appellants recognize both Teuber and Axelsson exemplify a
compound that would meet Appellants’ formula (I), wherein the R
substituent is CH2OH or CH3OCH2, except that the R’ group is not thienyl or
thiazolyl (App. Br. 16 and 25).
FF 10. Compound 58a of Teuber corresponds to the claimed compound
except that it has a 3-pyridyl substituent at the R’ position (Teuber, col. 23, l.
19). Teuber teaches that this compound is biologically active (Teuber, col.
34, l. 61).

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ANALYSIS
Appellants’ claim 1 is drawn to compound of general formula (I).
The compound of claim 1 includes a compound having the formula

wherein R is hydroxyalkyl and R’ is a thienyl or thiazolyl that is optionally
substituted with one or more substitutents independently selected from the
group consisting of halo, hydroxyl, amino, alkylamino, aminoalkyl, cyano,
nitro, trifluoromethyl, trifluoromethoxy, alkoxy, cycloalkoxy, alkyl,
cycloalkyl, cycloalkylalkyl, alkenyl, and alkynyl.
Appellants recognize that Axelsson teaches compounds that “include
the various R and R’ groups required by present independent claim 1” (App.
Br. 25). The same is true of Appellants’ characterization of Teuber (see,
e.g., App. Br. 16). Therefore, Appellants recognize that Axelsson and
Teuber both teach a genus of compounds having Appellants’ formula (I),
with properly placed substituents that include those defined by Appellants’
R and R’ groups.
Nevertheless, Appellants contend that since Axelsson and Teuber do
not exemplify a compound of Appellants’ formula (I) that has Appellants’
chosen substituent for the R and R’ position, neither Axelsson nor Teuber
can make obvious the compound set forth in Appellants’ claim 1 (see, e.g.,
App. Br. 16 and 26). Instead, Appellants contend that a person of ordinary
skill in this art would not have been motivated to select the specific
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substituents that Appellants have selected from the disclosures of Teuber
and Axelsson (App. Br. 17 and 26-27). We are not persuaded.
Both Axelsson and Teuber teach a genus of compounds that includes
Appellants’ formula (I), as well as properly placed substituents that include
those defined by Appellants’ R and R’ groups. Therefore one skilled in this
art is free to “select” the compound taught by either of Axelsson or Teuber
as well as any of the substituents Axelsson or Teuber teach for the R and R’
groups of these compounds.
As Appellants recognize, both Teuber and Axelsson exemplify a
compound that would meet Appellants’ formula (I), wherein the R
substituent is CH2OH or CH3OCH2 (FF 9), except that these exemplified
compounds do not contain the same R’ substituent as set forth in Appellants’
claim 1. While neither of the prior art references exemplify the specific R
substituents together with a substituted thienyl or thiazolyl at Appellants’ R’
substituent, the reason for changing the respective R’ substituent of the
exemplified prior art compounds with a substituted thienyl or thiazolyl is
found right in the prior art itself.
Axelsson’s R13 substituent and Teuber’s R11 substituent corresponds
to Appellants’ R’ substituent. Axelsson teaches that the R13 substituent can
be aryl and Appellants admit that Axelsson’s example 3a provides explicit
direction to use aryl, more specifically 3-thienyl, in the R13 position (App.
Br. 25). Teuber teaches that the R11 substituent can be substituted forms of
phenyl; benzimidazolyl; or aryl. Accordingly, it would appear that the
selection of aryl from Teuber’s limited genus would have been within the
ordinary skill in this art as would the selection of a substituted thienyl or
thiazolyl which is included in Teuber’s definition of aryl (FF 7).
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For the foregoing reasons, we find that the compound set forth in
claim 1 would have been prima facie obvious to a person of ordinary skill in
this art at the time the invention was made. Furthermore, Axelsson and
Teuber both teach that compounds including those of the formula which
Appellants refer to as formula (I), wherein the R substituent is CH2OH or
CH3OCH2 and the R’ substituent is a substituted thienyl or thiazolyl are
useful in the treatment of, inter alia, epilepsy (FF 4 and FF 8). Accordingly,
we find that a person of ordinary skill in this art would have had a
reasonable expectation of success in preparing compounds of formula (I)
having the foregoing substituents for the treatment of epilepsy.
What Appellants seek to do is remove from the public domain the
right of the public to use for any purpose compounds that Teuber and
Axelsson suggest and for the foregoing reasons would have been obvious to
those of ordinary skill in this art. Consistent with Graham, Bonito Boats and
KSR, no cogent rationale can justify granting Appellants a patent to
compounds which the public is free to use to accomplish objectives
described by either of Teuber or Axelsson.

CONCLUSION OF LAW
A person of ordinary skill in this art would have found it prima facie
obvious to select CH2OH or CH3OCH2 as the R6 substituent of Axelsson or
Teuber compound and a thienyl or thiazolyl for the R13 substituent of
Axelsson’s or the R11 substituent of Teuber’s compounds. Accordingly, the
resulting compound suggested by Axelsson or Teuber would be a compound
set forth in Appellants’ claim 1.

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For the foregoing reasons we affirm the rejection of claim 1 under 35
U.S.C. § 103(a) as unpatentable over Teuber or Axelsson. Because they are
not argued separately, claims 7-9 and 14 fall together with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii).

Claim 2:
ISSUE
Would a person of ordinary skill in this art have found it prima facie
obvious to select CH2OH or CH3OCH2 as the R6 substituent of Axelsson’s or
Teuber’s compounds?

FINDINGS OF FACT
FF 11. Appellants admit that both Teuber and Axelsson provide a specific
disclosure of a compound in which the substituent correponding to the R
substituent of Appellants’ formula (I) is hydroxymethyl (App. Br. 16 and
25).

ANALYSIS
Claim 2 depends from and further limits the R substituent of claim 1
to, inter alia, hydroxymethyl.
Appellants contend that “claim 2 is additionally distinct in being even
more specific with respect to the specific selection of substituents” (App. Br.
18 and 28). However, as Appellants recognize both Teuber and Axelsson
provide a specific disclosure of a compound in which the substituent
corresponding to the R substituent of Appellants’ formula (I) is
hydroxymethyl (FF 11).
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For the foregoing reasons, we are not persuaded by Appellants’
argument.

CONCLUSION OF LAW
A person of ordinary skill in this art would have found it prima facie
obvious to select CH2OH or CH3OCH2 as the R6 substituent of Axelsson’s or
Teuber’s compounds.
For the foregoing reasons, we affirm the rejection of claim 2 under 35
U.S.C. § 103(a) as unpatentable over Teuber or Axelsson.

Claim 3:
ISSUE
Would a person of ordinary skill in this art have found it prima facie
obvious to select 1-hydroxyethyl as the R6 substituent of Axelsson’s or
Teuber’s compounds?

FINDINGS OF FACT
FF 12. As discussed above, Axelsson teaches a compound in which the
substituent corresponding to the R substituent of Appellants’ formula (I)
(Axelsson’s R6 substituent) is hydroxyalkyl (e.g., -(CH2)n-OH wherein n is
0, 1, 2, or 3) (FF 1-3).
FF 13. As discussed above, Teuber teaches a compound in which the
substituent corresponding to the R substituent of Appellants’ formula (I)
(Axelsson’s R6 substituent) is alkoxy (FF 5-7).
FF 14. Teuber defines the term “alkoxy” as “O-alkyl, wherein alkyl is as
defined above” (Teuber, col. 4, l. 63).
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FF 15. Teuber defines the term “alkyl” as “a straight chain or branched
chain of from one to eight carbon atoms . . . including but not limited to,
methyl, ethyl, propyl, isopropyl, butyl, isobutyl, t-butyl, pentyl, hexyl,
cyclopropyl, cyclobutyl, cyclopentyl, cyclohexyl; methyl, ethyl, propyl,
isopropyl and t-butyl are preferred groups” (Teuber, col. 4, ll. 56-62).

ANALYSIS
Claim 3 depends from and further limits the R substituent of claim 1
to, inter alia, represent 1-hydroxyethyl. In addition to their arguments with
regard to claim 1, Appellants contend that the selection of the specific R
substituent set forth in claim 3 “represents an additional distinction from the
cited art” (App. Br. 19 and 28). We are not persuaded.
Axelsson teaches a compound in which the substituent corresponding
to the R substituent of Appellants’ formula (I) (Axelsson’s R6 substituent) is
hydroxyalkyl (e.g., -(CH2)n-OH wherein n is 0, 1, 2, or 3) (FF 12). When
n=2, Axelsson meets the requirements of Appellants’ claimed invention
wherein R is 1-hydroxyethyl.
Teuber teaches a compound in which the substituent corresponding to
the R substituent of Appellants’ formula (I) (Axelsson’s R6 substituent) is
alkoxy (FF 13). Teuber defines the term “alkoxy” as “O-alkyl,” wherein
Teuber teaches a preference for alkyl to be ethyl (FF 14 and 15).
Accordingly, both Axelsson and Teuber suggest a compound within
the scope of Appellants’ claimed invention and in so doing direct a person of
ordinary skill in the art to the use of 1-hydroxyethyl in the R position.

CONCLUSION OF LAW
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A person of ordinary skill in this art would have found it prima facie
obvious to select 1-hydroxyethyl as the R6 substituent of Axelsson’s or
Teuber’s compounds.
For the foregoing reasons, we affirm the rejection of claim 3 under 35
U.S.C. § 103(a) as unpatentable over Teuber or Axelsson.

Claim 4:
ISSUE
Would a person of ordinary skill in this art have found it prima facie
obvious to select 2-alkoxy-2-propyl as the R6 substituent of Axelsson’s or
Teuber’s compounds?

FINDINGS OF FACT
FF 16. Teuber and Axelsson both define the term “alkoxy” as “O-alkyl,
wherein alkyl is as defined above” (FF 14 and Axelsson, col. 5, ll. 64-65).
FF 17. Teuber and Axelsson both define the term “alkyl” as “a straight
chain or branched chain of from one to eight carbon atoms . . . including but
not limited to, methyl, ethyl, propyl, isopropyl, butyl, isobutyl, t-butyl,
pentyl, hexyl, cyclopropyl, cyclobutyl, cyclopentyl, cyclohexyl” (FF 15 and
Axelsson, col. 5, ll. 44-50). Axelsson identifies methyl, ethyl, propyl, and
isopropyl as preferred groups (Axelsson, col. 5, ll. 50-51). Teuber’s
preferred groups are the same as Axelsson, in addition to t-butyl (FF 15).

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ANALYSIS
Claim 4 depends from and further limits the R substituent of claim 1
to represent, inter alia, 2-alkoxy-2-propyl. In addition to their arguments
with regard to claim 1, Appellants contend that the selection of the specific
R substituent set forth in claim 4 “represents an additional distinction from
the cited art” (App. Br. 19 and 29). We are not persuaded.
Both Axelsson and Teuber teach a compound in which the substituent
corresponding to the R substituent of Appellants’ formula (I) (Axelsson’s R6
substituent) is alkoxy (FF 16 and 17). Axelsson and Teuber both define the
term “alkoxy” as “O-alkyl,” with a preference for the alkyl to be propyl (id.).
In addition, we note that neither Axelsson nor Teuber is restricted to any
particular positional isomer.
Accordingly, both Axelsson and Teuber direct a person of ordinary
skill in the art to the use an alkoxy-propyl, which includes 2-alkoxy-2-propyl
in the R position, and thereby suggest a compound within the scope of
Appellants’ claimed invention.

CONCLUSION OF LAW
A person of ordinary skill in this art would have found it prima facie
obvious to select 2-alkoxy-2-propyl as the R6 substituent of Axelsson’s or
Teuber’s compounds.
For the foregoing reasons, we affirm the rejection of claim 4 under 35
U.S.C. § 103(a) as unpatentable over Teuber or Axelsson.

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Appeal 2009-000723
Application 10/546,437

Claim 5:
ISSUE
Would a person of ordinary skill in this art have found it prima facie
obvious to select thienyl or thiazolyl as the R13 substituent of Axelsson’s
compound or the R11 substituent of Teuber’s compounds?

ANALYSIS
Claim 5 depends from and further limits the R’ substituent of claim 1
to represent thienyl or thiazolyl. In addition to their arguments with regard
to claim 1, Appellants contend that the selection of the specific R substituent
set forth in claim 5 “represents an additional distinction from the cited art”
(App. Br. 19 and 29). We are not persuaded.
Axelsson’s R13 substituent and Teuber’s R11 substituent correspond to
Appellants’ R’ substituent. Axelsson teaches that the R13 substituent can be
aryl and Appellants admit that Axelsson’s example 3a provides explicit
direction to use aryl, more specifically 3-thienyl, in the R13 position (App.
Br. 25). Teuber teaches that the R11 substituent can be substituted forms of
phenyl; benzimidazolyl; or aryl. Accordingly, it would appear that the
selection of aryl from Teuber’s limited genus would have been within the
ordinary skill in this art as would the selection of a substituted thienyl or
thiazolyl which is included in Teuber’s definition of aryl (FF 7).

CONCLUSION OF LAW
A person of ordinary skill in this art would have found it prima facie
obvious to select thienyl or thiazolyl as the R13 substituent of Axelsson’s
compound or the R11 substituent of Teuber’s compounds.
20
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For the foregoing reasons we affirm the rejection of claim 5 under 35
U.S.C. § 103(a) as unpatentable over Teuber or Axelsson.

Claim 6:
ISSUE
Would a person of ordinary skill in this art have found it prima facie
obvious to select CH3OCH2 as the R6 substituent of Axelsson’s or Teuber’s
compounds and 2-thienyl as the R13 substituent of Axelsson’s compound or
the R11 substituent of Teuber’s compound, resulting in 1-(3-(2-
thienyl)phenyl)-5-(methoxymethyl)benzimidazole?

ANALYSIS
Claim 6 depends from and limits claim 1 to a compound that is, inter
alia, 1-(3-(2-thienyl)phenyl)-5-(methoxymethyl)benzimidazole. In addition
to their arguments with regard to claim 1, Appellants contend that the
selection of the specific R substituent set forth in claim 6 “represents an
additional distinction from the cited art” (App. Br. 20 and 30). We are not
persuaded.
As Appellants recognize both Teuber and Axelsson provide a
disclosure of a compound corresponding to Appellants’ formula (I), wherein
the R substituent is CH3OCH2, except that the position corresponding to R’
does not have a thienyl or thiazolyl group (App. Br. 16 and 25). While
neither of the prior art references exemplify this specific R substituent and a
2-thienyl substituent at Appellants’ R’ substituent, the reason for making this
specific compound is found right in the prior art itself.
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Axelsson’s R13 substituent and Teuber’s R11 substituent correspond to
Appellants’ R’ substituent. Axelsson teaches that the R13 substituent can be
aryl. Teuber teaches that the R11 substituent can be aryl. Axelsson and
Teuber both define aryl as including 2-thienyl (FF 3 and 7).
For the foregoing reasons, we find that both Axelsson and Teuber
would lead a person of ordinary skill in the art to select CH3OCH2 as the R6
substituent of Axelsson’s or Teuber’s compounds and 2-thienyl as the R13
substituent of Axelsson’s compound or the R11 substituent of Teuber’s
compound, resulting in 1-(3-(2-Thienyl)phenyl)-5-(methoxymethyl)
benzimidazole.

CONCLUSION OF LAW
A person of ordinary skill in this art would have found it prima facie
obvious to select CH3OCH2 as the R6 substituent of Axelsson’s or Teuber’s
compounds and 2-thienyl as the R13 substituent of Axelsson’s compound or
the R11 substituent of Teuber’s compound, resulting in 1-(3-(2-thienyl)
phenyl)-5-(methoxymethyl)benzimidazole.
For the foregoing reasons we affirm the rejection of claim 6 under 35
U.S.C. § 103(a) as unpatentable over Teuber or Axelsson.

Claim 15:
ISSUE
Would a person of ordinary skill in this art have found it prima facie
obvious to select thienyl as the R13 substituent of Axelsson’s compound or
the R11 substituent of Teuber’s compound?

22
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Application 10/546,437

ANALYSIS
Claim 15 depends from and further limits the R’ substituent of claim 1
to represent thienyl. In addition to their arguments with regard to claim 1,
Appellants contend that the selection of the specific R substituent set forth in
claim 15 “represents an additional distinction from the cited art” (App. Br.
21 and 30). We are not persuaded for the reasons set forth above with
respect to claims 1 and 6.

CONCLUSION OF LAW
A person of ordinary skill in this art would have found it prima facie
obvious to select thienyl as the R13 substituent of Axelsson’s compound or
the R11 substituent of Teuber’s compound.
For the foregoing reasons we affirm the rejection of claim 15 under 35
U.S.C. § 103(a) as unpatentable over Teuber or Axelsson.

Claim 16:
ISSUE
Would a person of ordinary skill in this art have found it prima facie
obvious to select thiazolyl as the R13 substituent of Axelsson’s compound or
the R11 substituent of Teuber’s compound?

ANALYSIS
Claim 16 depends from and further limits the R’ substituent of claim 1
to represent thiazolyl. In addition to their arguments with regard to claim 1,
Appellants contend that the selection of the specific R substituent set forth in
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claim 16 “represents an additional distinction from the cited art” (App. Br.
21 and 31). We are not persuaded.
Axelsson’s R13 substituent and Teuber’s R11 substituent correspond to
Appellants’ R’ substituent. Axelsson teaches that the R13 substituent can be
aryl. Teuber teaches that the R11 substituent can be aryl. Axelsson and
Teuber both define aryl as including thiazolyl (FF 3 and 7).

CONCLUSION OF LAW
A person of ordinary skill in this art would have found it prima facie
obvious to select thiazolyl as the R13 substituent of Axelsson’s compound or
the R11 substituent of Teuber’s compound.
For the foregoing reasons we affirm the rejection of claim 16 under 35
U.S.C. § 103(a) as unpatentable over Teuber or Axelsson.

Claim 17:
ISSUE
Would a person of ordinary skill in this art have found it prima facie
obvious to select a halo- or alkyl-substituted thienyl as the R13 substituent of
Axelsson’s compound or the R11 substituent of Teuber’s compound?

ANALYSIS
Claim 17 depends from and further limits the R’ substituent of claim 1
to represent thienyl substituted with, inter alia, halo or alkyl. In addition to
their arguments with regard to claim 1, Appellants contend that the selection
of the specific R substituent set forth in claim 17 “represents an additional
distinction from the cited art” (App. Br. 21 and 31). We are not persuaded.
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Axelsson’s R13 substituent and Teuber’s R11 substituent correspond to
Appellants’ R’ substituent. Axelsson teaches that the R13 substituent can be
aryl. Teuber teaches that the R11 substituent can be aryl. Axelsson and
Teuber both disclose that the aryl may be substituted one or more times with
halogen or alkyl (FF 2 and 6). In addition, Axelsson and Teuber both define
aryl as including thienyl (FF 3 and 7).
Accordingly, Axelsson directs a person of ordinary skill in the art to
use a halogen or alkyl substituted thienyl as the R13 substituent and Teuber
directs a person of ordinary skill in the art to use a halogen or alkyl
substituted thienyl as the R11 substituent.

CONCLUSION OF LAW
A person of ordinary skill in this art would have found it prima facie
obvious to select a halo- or alkyl-substituted thienyl as the R13 substituent of
Axelsson’s compound or the R11 substituent of Teuber’s compound.
For the foregoing reasons we affirm the rejection of claim 17 under 35
U.S.C. § 103(a) as unpatentable over Teuber or Axelsson.

Claim 18:
ISSUE
Would a person of ordinary skill in this art have found it prima facie
obvious to select a halo- or alkyl-substituted thiazolyl as the R13 substituent
of Axelsson’s compound or the R11 substituent of Teuber’s compound?

25
Appeal 2009-000723
Application 10/546,437

ANALYSIS
Claim 18 depends from and further limits the R’ substituent of claim 1
to represent thiazolyl substituted with, inter alia, halo or alkyl. In addition
to their arguments with regard to claim 1, Appellants contend that the
selection of the specific R substituent set forth in claim 18 “represents an
additional distinction from the cited art” (App. Br. 22 and 32). We are not
persuaded.
Axelsson’s R13 substituent and Teuber’s R11 substituent correspond to
Appellants’ R’ substituent. Axelsson teaches that the R13 substituent can be
aryl. Teuber teaches that the R11 substituent can be aryl. Axelsson and
Teuber both disclose that the aryl may be substituted one or more times with
halogen or alkyl (FF 2 and 6). In addition, Axelsson and Teuber both define
aryl as including thiazolyl (FF 3 and 7).
Accordingly, Axelsson directs a person of ordinary skill in the art to
use a halogen or alkyl substituted thiazolyl as the R13 substituent and Teuber
directs a person of ordinary skill in the art to use a halogen or alkyl
substituted thiazolyl as the R11 substituent.

CONCLUSION OF LAW
A person of ordinary skill in this art would have found it prima facie
obvious to select a halo- or alkyl-substituted thiazolyl as the R13 substituent
of Axelsson’s compound or the R11 substituent of Teuber’s compound.
For the foregoing reasons we affirm the rejection of claim 18 under 35
U.S.C. § 103(a) as unpatentable over Teuber or Axelsson.

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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

cdc

BIRCH STEWART KOLASCH & BIRCH
PO BOX 747
FALLS CHURCH VA 22040-0747
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