Ex parte Welch

Board of Patent Appeals and Interferences

Mar 31, 2000

08178269 (B.P.A.I. Mar. 31, 2000)

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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte WILLARD M. WELCH
________________
Appeal No. 1997-1816
Application No. 08/178,269
________________
ON BRIEF
________________
Before KIMLIN, WARREN and OWENS, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
11, 14 and 17-19. Claims 12, 13, 15, 16 and 20, the other
claims remaining in the present application, have been
withdrawn from consideration as being directed to a non-
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Application No. 08/178,269
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elected invention. A copy of illustrative claim 1 is appended
to this decision.
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The examiner relies upon the following references as
evidence of obviousness:
Frost et al. (Frost) 5,034,401 Jul. 23, 1991
Chenard (Chenard '343) 5,185,343 Feb. 09, 1993
Chenard (Chenard '723) 5,306,723 Apr. 26, 1994
(§ 102(e) date Nov. 6, 1992)
Appellant's claimed invention is directed to novel
neuroprotective 2-(4-hydroxypiperidino)-1-alkanol derivatives
of the recited formula. The claimed compounds find utility in
treating stroke, traumatic injury to the brain and spinal cord
and neuronal degenerative diseases, such as senile dementias.
Appealed claims 11, 14, 17 and the quinolyl compounds of
claims 1-10, 18 and 19 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Frost in view of Chenard '343. The
same claims also stand rejected under 35 U.S.C. § 103 as being
unpatentable over Frost in view Chenard '723. In addition,
the same claims stand rejected under 35 U.S.C. § 103 as being
unpatentable over Chenard '723 in view of Frost.
We consider first the examiner's rejection over Frost in
view of Chenard '723. The examiner recognizes that the
difference between the compounds of Frost and the claimed
compounds is that "Frost's R is hydrogen while the claimed4
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compounds have an OH at this position" (page 5 of Answer).
However, the examiner reasons that since Chenard '343
discloses compounds similar in structure to those of Frost
having the same utility wherein H and OH are interchangeable
at the 4-position of the heterocyclic ring, it would have been
obvious for one of ordinary skill in the art to substitute an
OH group at the R position of Frost.4
Appellant maintains that the examiner has improperly
focused only on the 4-position of the piperidinyl moiety while
ignoring "all the other differences which exist between
Frost's compounds and Chenard's compounds in an effort to make
out a prima facie case of obviousness" (page 25 of principal
brief). In particular, appellant contends "Frost also does
not even suggest combining the benzo-fused moieties disclosed
as part of his compounds with the type of moieties disclosed
by Chenard." Also, appellant submits that "Chenard does not
teach or suggest combining portions of their compounds with
the benzo-fused moieties disclosed by Frost" (page 25 of
principal brief).
Appellant's argument goes to the heart of the examiner's
position that the compounds of Frost and Chenard '343 are
Appeal No. 1997-1816
Application No. 08/178,269
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close in chemical structure. Indeed, the compounds of Chenard
'343 do not possess the benzo-fused moieties of Frost.
Significantly, while we find appellant's argument to be a
valid one, we have searched in vain for any response or
refutation of this argument in the Examiner's Answer or
Supplemental Answer. Consequently, inasmuch as the examiner
has not established that the difference in chemical structure
between the compounds of Frost and Chenard '343 pointed out by
appellant would not militate against modifying the 4-position
of Frost in the manner proposed by the examiner, we are
constrained to find that the examiner has not established a
prima facie case of obviousness over the combined teachings of
Frost and Chenard '343.
We now turn to the examiner's rejections based upon the
combined teachings of Frost and Chenard '723. We cannot
sustain these rejections because Chenard '723 is not an
effective prior art reference against the present application,
which has an effective filing date of July 17, 1991. The
effective § 102(e) date of Chenard '723 is November 6, 1992.
While the examiner suggests that she is actually relying upon
PCT Publication WO 91/17156, the effective prior art date of
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Application No. 08/178,269
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this reference is November 14, 1991, not the priority date of
the international publication. The examiner's attention is
directed to MPEP § 1895.01(E) (7th ed., July 1998).
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Application No. 08/178,269
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In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
ECK:clm
Appeal No. 1997-1816
Application No. 08/178,269
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Gregg C. Benson
Pfizer Inc.
Eastern Point Road
Groton, CT 06340
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APPENDIX
1. A compound of the formula:
(I)
and the pharmaceutically-acceptable salts thereof; wherein R ,1
R and R are each selected from the group consisting of2 3
hydrogen, alkyl having 1 to 6 carbons, phenyl and substituted
phenyl, wherein the substituent on said substituted phenyl is
selected from the group consisting of hydroxy, alkyl having 1
to 4 carbons, chloro, bromo, fluoro, trifluoromethyl, amino,
nitro and alkoxy having 1 to 4 carbons;
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or R and R when taken together form a methylene, ethylene,1 2
propylene or butylene group;
m is 0 to 2;
n is 1 or 2;
X and Y are each selected from the group consisting of
hydrogen, chloro, bromo, fluoro, trifluoromethyl, alkoxy
having 1 to 4 carbons, alkyl having 1 to 4 carbons, hydroxy,
amino, nitro and substituted phenoxy, wherein the substituent
on said substituted phenoxy is selected from the group
consisting of hydrogen, hydroxy, alkyl having 1 to 4 carbons,
chloro, bromo, fluoro, trifluoromethyl, nitro, amino and
alkoxy having 1 to 4 carbons;
M and Q are each selected from the group consisting of
hydrogen, hydroxy, amino, chloro, bromo, fluoro,
trifluoromethyl, nitro, alkyl having 1 to 4 carbons, alkoxy
having 1 to 4 carbons, N,N-dialkylamino having 1 to 4 carbons
in each of said alkyls, N-alkylamino having 1 to 4 carbons,
NHCOR , NHCOOR and NHSO R ; wherein R is selected from the4 5 2 6 4
group consisting of hydrogen, alkyl having 1 to 6 carbons,
phenyl and substituted phenyl, wherein the substituent on said
substituted phenyl is selected from the group consisting of
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hydroxy, chloro, bromo, fluoro, trifluoromethyl, amino, nitro,
alkyl having 1 to 4 carbons and alkoxy having 1 to 4 carbons;
and wherein R and R are each selected from the group5 6
consisting of alkyl having 1 to 6 carbons, phenyl and
substituted phenyl, wherein the substituent on said
substituted phenyl is selected from the group consisting of
hydroxy, chloro, bromo, fluoro, trifluoromethyl, amino, nitro,
alkyl having 1 to 4 carbons and alkoxy having 1 to 4 carbons;
or M and Q when taken together form a divalent radical Z,
wherein Z is selected from the group consisting of
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whe rein R7
and R are8
eac h
sel ected
fro m the
group consisting of hydrogen and methyl.