11514905 (B.P.A.I. Sep. 1, 2010)

Ex Parte Yamazaki

Board of Patent Appeals and InterferencesSep 1, 2010

11514905 (B.P.A.I. Sep. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte SATOSHI YAMAZAKI __________ Appeal 2010-000565 Application 11/514,905 Technology Center 1600 __________ Before ERIC GRIMES, CAROL A. SPIEGEL, and MELANIE L. McCOLLUM, Administrative Patent Judges. McCOLLUM, Administrative Patent Judge. DECISION ON APPEAL1 This is an appeal under 35 U.S.C. § 134 involving claims to a method of treating constipation predominant irritable bowel syndrome (IBS) or abdominal pain or discomfort associated therewith. The Examiner has rejected the claims for being obvious and under the judicially-created 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-000565 Application 11/514,905 2 doctrine of obviousness-type double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Claims 1-21 are pending and on appeal (App. Br. 4). Claims 1, 6, 13, and 18 are independent. Claims 1 and 6 are each directed to a method of treating constipation predominant IBS comprising administering to a patient in need thereof a therapeutically effective amount of a compound corresponding to a specified chemical formula (claim 1) or a particular compound (claim 6). Claims 13 and 18 are each directed to a method of treating abdominal pain or discomfort associated with constipation predominant IBS comprising administering to a patient in need thereof a therapeutically effective amount of a compound corresponding to a specified chemical formula (claim 13) or a particular compound (claim 18). Claims 1-21 stand rejected under 35 U.S.C. § 103(a) as obvious in view of EP 0,560,348 A1, published Sept. 15, 1993, to Maruyama et al. (hereinafter “EP reference”) (Ans. 4). Claims 1-21 stand rejected for obviousness-type double patenting over US 5,352,685, issued Oct. 4, 1994, to Maruyama et al. (hereinafter “US patent”) (Ans. 7). OBVIOUSNESS The EP reference discloses a compound that “is effective for the prevention and therapeutical treatment of the symptoms caused by gastric hypanakinesis, such as heartburn, abdominal distension feeling, anorexia, unpleasant feeling on upper abdomen, abdominalgia, nausea, vomiting, etc. caused by the underlying diseases such as acute and chronic gastritis, Appeal 2010-000565 Application 11/514,905 3 stomach and duodenum ulcer, gastroneurosis, gastroptosis, etc.” (EP reference, Abstract (emphasis added)). The EP reference states that it is believed that the compound enhances gastric motor action and gastric emptying (id.). The issue is whether the evidence supports the conclusion that it would have been obvious to administer this compound to treat constipation predominant IBS or abdominal pain or discomfort associated therewith. For the reasons set forth in the Appeal Brief and Reply Brief, we agree with Appellant that the evidence does not support this conclusion. In particular, claim 5 of the EP reference is directed to a “pharmaceutical composition for preventing and therapeutically treating the diseases caused by gastrointestinal dismotility” (id. at 22). We do not dispute the Examiner’s finding that gastrointestinal dismotility includes constipation (Ans. 6). However, when this recitation is read in context, we agree with Appellant that the evidence does not support the position that it would have been obvious to administer this compound to treat intestinal dismotility. Thus, we agree with Appellant that the evidence does not support the Examiner’s conclusion that it would have been obvious to administer this compound to treat constipation predominant IBS or abdominal pain or discomfort associated therewith. As a result, we reverse the obviousness rejection. DOUBLE PATENTING The Examiner states that the basis of the obviousness-type double patenting rejection is the same as the obviousness rejection (Ans. 7). Claims 19-21 of the US patent are directed to a “method of preventing and Appeal 2010-000565 Application 11/514,905 4 treating the disease caused by gastrointestinal dismotility” (US patent, cols. 23-24). However, we do not agree that this suggests treating constipation predominant IBS or abdominal pain or discomfort associated therewith for the reasons discussed above. We therefore reverse the obviousness-type double patenting rejection. REVERSED cdc WENDEROTH, LIND & PONACK, L.L.P. 1030 15TH STREET, N.W., SUITE 400 EAST WASHINGTON, DC 20005-1503