Ex Parte Watanabe et alDownload PDFPatent Trial and Appeal BoardSep 21, 201613381078 (P.T.A.B. Sep. 21, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/381,078 05/08/2012 Yasuyoshi Watanabe 20872 7590 09/23/2016 MORRISON & FOERSTER LLP 425 MARKET STREET SAN FRANCISCO, CA 94105-2482 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. 247322013200 1064 EXAMINER DONOHUE, SEAN R ART UNIT PAPER NUMBER 1618 NOTIFICATION DATE DELIVERY MODE 09/23/2016 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): EOfficeSF@mofo.com PatentDocket@mofo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte YASUYOSHI WATANABE, HIROTAKA ONOE, KA YO TAKAHASHI, MASAAKI SUZUKI, HISASHI DOI, and TAKAMITSUHOSOYA Appeal2015-003921 Application 13/381,078 1 Technology Center 1600 Before DONALD E. ADAMS, ERIC B. GRIMES, and DAVID COTTA, Administrative Patent Judges. COTT A, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to labeled compounds suitable for use in connection with positron emission tomography ("PET"). The Examiner rejected the claims on appeal as obvious under 35 U.S.C. § 103(a). We affirm. 1 According to Appellants, the real party in interest is Riken. App. Br. 3. Appeal2015-003921 Application 13/381,078 STATEivIENT OF THE CASE Claims 1, 2 and 4--13 are on appeal. Claim 1 is illustrative and reads as follows: 1. A compound, comprising a structure represented by formula (1) ~~~x1 x2V .... (1) wherein X 1 is 11CH3, CH218F, or CF218F, X2 is CN or N02, and R is any one of the groups represented by N-N L( _;) N I or The following grounds of rejection by the Examiner are before us on review: Claims 1, 5-7, 10, and 11 under 35 U.S.C. § 103(a) as unpatentable over Okada,2 in view of Suzuki,3 Schmidt,4 Okada II5, and/or Doi. 6 2 Okada et al., Studies on Aromatase Inhibitors II. Synthesis and Biological Evaluation of l-Amino-JH-1,2,4-triazole Derivatives, 45(2) CHEM. PHARM. BULL. 333-337 (1997) ("Okada"). 3 Suzuki et al., U.S. Patent No. 8,288,604 B2, issued Oct. 16, 2012 ("Suzuki"). 4 Schmidt et al., U.S. Patent Publication No. 2004/0241087 Al, published Dec. 2, 2004 ("Schmidt"). 5 Okada et al., U.S. Patent No. 5,674,886, issued Oct. 7, 1997 ("Okada II"). 6 Doi et al., Paladium(O)-Mediated Rapid Methylation and Fluoromethylation on Carbon Frameworks by Reacting Methyl and Fluoromethyl Iodide with Ary! and Alkenyl Boronic Acid Esters: Useful for the Synthesis of [11 C}CH3-C- and [1 8F}FCH2-C- Containing PET Tracers 2 Appeal2015-003921 Application 13/381,078 Claims 1, 2, and 4 under 35 U.S.C. § 103(a) as unpatentable over Okada II in view of Suzuki, Schmidt, Okada, and/or Doi. Claims 8, 9, 12, and 13 under 35 U.S.C. § 103(a) as unpatentable over Takashini7 in view of Okada, Suzuki, Schmidt, Okada II, and/or Doi. FINDINGS OF FACT 1. The Examiner finds that Okada discloses an aromatase inhibiting compound represented by the below formula. ~) ! ~N NC~ Ans. 4 (citing Okada Table 1, compound 4j). 2. Okada II discloses aromatase inhibiting compounds represented by the belo\v formulas. N Copy with citationCopy as parenthetical citation