California Institute of TechnologyDownload PDFPatent Trials and Appeals BoardOct 20, 20202020005067 (P.T.A.B. Oct. 20, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 16/166,893 10/22/2018 Brian M. Stoltz CTH-02102 1434 25181 7590 10/20/2020 FOLEY HOAG, LLP (General) PATENT GROUP, SEAPORT WEST 155 SEAPORT BLVD BOSTON, MA 02210-2600 EXAMINER KIFLE, BRUCK ART UNIT PAPER NUMBER 1624 NOTIFICATION DATE DELIVERY MODE 10/20/2020 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): Patent@foleyhoag.com pair_foleyhoag@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRIAN M. STOLTZ, ALEXANDER N. MARZIALE, ROBERT A. CRAIG, DOUGLAS DUQUETTE, KELLY E. KIM, MARC LINIGER, and YOSHITAKA NUMAJIRI, Appeal 2020-005067 Application 16/166,8931 Technology Center 1600 ____________ Before RICHARD M. LEBOVITZ, ULRIKE W. JENKS, and RACHEL H. TOWNSEND, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected claims 42 and 44–63 under 35 U.S.C. § 112(a) and (b) as lacking enablement and indefinite. Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “The ’893 Application.” 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as California Institute of Technology. Appeal Br. 6. Appeal 2020-005067 Application 16/166,893 2 STATEMENT OF THE CASE The Examiner rejected claims 42 and 44–63 in the Office Action dated Mar. 13, 2019 (“Office Act.”) as follows: 1. Claims 42 and 44–63 under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Office Act. 2. 2. Claims 42 and 44–63 under 35 U.S.C. § 112(a) as based on a disclosure which is not enabling. Office Act. 3. Claim 42 is the only independent claim on appeal. For brevity, we list below only the preamble and first step of the claim, and omit the remaining compound structures and corresponding definitions because these are not in dispute in the appeal. The full text of the claim, with its formulae and definitions, is reproduced in the Claim Appendix of the Appeal Brief. 42. A method of preparing a pharmaceutical agent, comprising preparing a compound of formula (I): the preparing the compound of formula (I) comprising treating, with a Pd(II) catalyst in an organic solvent . . . REJECTIONS Claim 1 is directed to “[a] method of preparing a pharmaceutical agent, comprising preparing a compound of formula (I).” The claim further recites specific method steps of preparing the formula (I) compound. The Appeal 2020-005067 Application 16/166,893 3 Examiner found that the claim is indefinite and lacking enablement because the structure of the claimed pharmaceutical agent is not recited in the claim and there are no method steps, reagents, or any other reaction parameters in the claim to convert the compound of formula (I) to the pharmaceutical agent or described in the Specification. Ans. 3. The claim recites how the formula (I) compound is made, but not how the formula (I) compound is converted into a “pharmaceutical agent.”3 The Examiner also found that the recited pharmaceutical agent encompasses a multitude of compounds, but there is no disclosure in the Specification of converting the compound of formula (I) to a pharmaceutical agent. Ans. 5. We interpret “pharmaceutical agent” to encompass a compound which has a useful biological activity in treating or preventing a disease or condition. Appellant contends that the term “pharmaceutical agent” does not make the claim indefinite because it only appears in the claim preamble and the claim preamble is not limiting because the body of the claim is fully defined and does not lack essential content or method steps. Appeal Br. 15. Appellant also argues that the preamble is “not needed to breathe life into the claim” because “all terms in the body of the claim are defined by structural or chemical formulae and supported by the specification.” Appeal Br. 16; Reply Br. 2. With respect to the enablement rejection, Appellant contends that the Examiner’s explanation of the rejection is conclusory and does not meet the 3 We recognize that the pharmaceutical agent could also be the formula (I) compound, itself. However, the claim also includes converting the formula I compound, by additional chemical steps, into a pharmaceutical agent. Appellant did not dispute that claim also reads on this embodiment. Appeal 2020-005067 Application 16/166,893 4 burden of establishing that the claims are not enabled by the Specification. Appeal Br. 21–22. Appellant also states the Examiner did not consider the full scope of claim 1. Reply Br. 15. Appellant states that “based on the claim language, the ‘pharmaceutical agent’ may be a product downstream of the compound of formula (I), but it may also be the compound of formula (I).” Id. DISCUSSION The appeal in this application is more completely understood in the context of the prosecution history of the parent application U.S. Serial No. 15/081,157 (“the ’157 Application), which is now U.S. Pat. No. 10,106,479 B2 (issued Oct. 23, 2018) “the ’479 Patent”). The ’893 Application in this appeal is a continuation of the ’157 Application. The claims of the ’893 Application in the present appeal are not identical to those that issued in the ’479 Patent, but the Examiner found that “they are not patentably distinct from each other because the patented claims are fully embraced by the instant claims.” Non-Final Rejection 3 (mailed Dec. 17, 2018). For this reason, the Examiner made an obviousness-type double-patenting rejection. Id. Appellant responded to the rejection by filing a terminal disclaimer. Response 9 (entered Feb. 20, 2019). The rejection was subsequently withdrawn by the Examiner. In the parent ’157 Application, the claims were directed to a method of preparing a compound of formula (Ia). Amendment entered Apr. 6, 2017 in the ’157 Application. The formula (Ia) compound is within the scope of compounds described by formula (I) recited in the presently rejected claims of the ’893 Application. The Examiner rejected the claim in the ’157 Application as lacking patentable utility under 35 U.S.C. § 101 because Appeal 2020-005067 Application 16/166,893 5 there “is no utility for the compounds” made by the claimed method. ’157 Appl. Non-Final Act. 5 (mailed Aug. 31, 2016). The Examiner also rejected the claims as indefinite and failing to comply with the enablement requirement. In response to the rejections, Appellant stated that the claimed methods “are scalable and stereoselective to prepare compounds of formula (I) that are useful in the synthesis of bioactive alkaloids, and for the construction of novel building blocks for medicinal and polymer chemistry starting materials (page 14, lines 21-25 of the application as filed). The claimed methods are important in the total synthesis of a variety of biologically active compounds and address previous scalability issues.” ’157 Appl. Response 14, 15 (entered Nov. 30, 2016). The Examiner maintained the rejection, stating that the utility relied upon by Appellant is for making “other compounds” which is “not a specific utility.” ’157 Appl. Final Act. 4 (mailed Dec. 15, 2016). In other words, the Examiner interpreted the formula (Ia) compound of the ’157 Application to be an intermediate used in the synthesis of other compounds said by Appellant to possess biological activity. In response to the Examiner, Appellant subsequently provided a scientific publication (Stoltz, B. M., et al., Beilstein J. Org. Chem., 2014, 10: 2501-2512) which Appellant asserted demonstrates “the utility of compounds of formula (Ia) in the synthesis of (+)-Quebrachamine, (+)- Rhazinilam and (+)-Vincadifformine.” ’157 Appl. Response 8 (entered Jul. 21, 2017). Appellant explained that “(+)-Rhazinilam is a bioactive microtubule-disrupting agent; (+)-Quebrachamine has been found to possess adrenergic blocking activities for a variety of urogenital tissues; and (+)- Appeal 2020-005067 Application 16/166,893 6 Vincadifformine is an important precursor pharmaceutically important compounds Vincamine, Vincamone, and Cavinton.” Id. Appellant further stated that “the evidence of record clearly demonstrates that compounds of formula (Ia) would be useful for the synthesis bioactive and medicinally relevant compounds such as (+)-Quebrachamine, (+)-Rhazinilam, (+)- Vincadifformine and novel derivatives thereof.” Id. at 8–9. The Examiner withdrew the utility rejection in response to Appellant’s comments, but maintained the enablement and indefinite rejections in the ’157 Application. Appellant filed an appeal to the final rejection, and after the Appeal Brief was filed, a Notice Allowance was mailed by the Examiner (Jun. 14, 2018) and the claims issued in the ’479 Patent. In examining the’893 Application, the Examiner did not repeat the utility rejection under § 101, presumably at least for the reason that the evidence in the parent ’157 Application established that certain compounds within the scope of claim 42 are “useful for the synthesis [of] bioactive and medicinally relevant compounds such as (+)-Quebrachamine, (+)- Rhazinilam, (+)-Vincadifformine and novel derivatives thereof.” ’157 Appl. Response 8–9 (entered Jul. 21, 2017). The Examiner’s complaint with respect to the claims of the ’893 Application is that those claims cover pharmaceutical agents made from the formula (I) compound, but they do not recite the structure of these agents, nor does the Specification describe how to make them. The Examiner’s understanding of the scope of claim 1 as including preparing pharmaceutical agents made from the formula (I) compound is reasonable and consistent with the prosecution of the ’157 Patent in which Appellant acknowledged Appeal 2020-005067 Application 16/166,893 7 that the formula (Ia) compound, which is encompassed by present formula (I), is useful as an intermediate to synthesize other compounds which possess useful biological activity. ’157 Appl. Response 8–9 (entered Jul. 21, 2017). In the ’157 Application, Appellant did not assert that the formula (Ia) compounds, themselves, have a biologically activity, but rather relied on their use as intermediates “for the construction of novel building blocks for medicinal and polymer chemistry starting materials.” ’157 Appl. Response 14, 15 (entered Nov. 30, 2016). In this context, it is evident that the present claims for “preparing a pharmaceutical agent, comprising preparing a compound of formula (I),” includes preparing one of the “bioactive and medicinally relevant compounds,” such as “(+)-Quebrachamine, (+)-Rhazinilam, (+)- Vincadifformine,” relied upon in the ’157 Application to establish the utility of the claims. Yet, as found by the Examiner, the claim does not recite the structure of these compounds nor does Appellant guide us to a description in the Specification of how they are made. Moreover, the claim does not just include these compounds, but covers any compound made using formula (I) as a precursor compound. Appellant asks us to ignore the recitation of “pharmaceutical agent” in the claim because it only appears in the claim preamble, and for a variety of legal reasons discussed by Appellant focusing on structural independence of the body of the claim with respect to preparing the compound of formula (I), should be given no weight. See, e.g., Appeal Br. 14. Whether to treat a preamble as a limitation is determined on the facts of each case in light of the overall form of the claim[ ] and the invention as described in the specification and illuminated in the prosecution history.” Appeal 2020-005067 Application 16/166,893 8 Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1357 (Fed. Cir. 2012) (quotation marks omitted); Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quoting Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989)) (“Whether to treat a preamble as a limitation is a determination ‘resolved only on review of the entire[ ]. . . patent to gain an understanding of what the inventors actually invented and intended to encompass by the claim.’”) (alterations in original). However, Appellant acknowledged in the prosecution of the ’157 Application that compounds within the scope of rejected claim 42 have utility as intermediates in the synthesis of pharmacological agents. Indeed, their use as “building blocks” for pharmaceutical agents (“bioactive and medicinally relevant compounds”) was the only asserted utility for compounds of formula (Ia). It is clear that Appellant is now, by writing a claim to “preparing a pharmaceutical agent, ” is claiming the manufacture of these “bioactive and medicinally relevant compounds” using the formula (I) compound as a building block. The prosecution history reveals that the only asserted utility of claimed compounds is their use of pharmaceutical agents, which is now expressly claimed. “Statements made during prosecution of a parent application are relevant to construing terms in a patent resulting from a continuation application if such statements relate to the subject matter of the claims being construed.” Iridescent Networks, Inc. v. AT&T Mobility, LLC, 933 F.3d 1345, 1350 (Fed. Cir. 2019). As noted above, the ’893 Application in this appeal is a continuation of the ’157 Application. Appellant’s legal arguments about the preamble not being a limitation of the claim and of no significance to the claim’s construction (Reply Br. 2), Appeal 2020-005067 Application 16/166,893 9 ignores the prosecution history in the parent ’157 Application, that the pending and rejected claims cover making pharmaceutical agents from the formula (I) compound. “Claims in pending applications receive their broadest reasonable interpretation during examination.” In re Fought, 941 F.3d 1175, 1177 (Fed. Cir. 2019). In light of the above, we therefore agree with the Examiner that the claim covers making pharmaceutical agents from formula (I) compounds and is indefinite because the claim does not describe the structure of these agents and consequently one of ordinary skill in the art cannot ascertain the scope of the claim. Ans. 3. As indicated by the Examiner, the claim scope is broad because it covers making any pharmaceutical agent that includes the explicitly recited process steps in the claim, as well as any additional steps necessary to make the claimed pharmaceutical agent from the Formula (I) compound. If we were to ignore the claim preamble as counseled by Appellant, and ignore a fundamental characteristic of the claimed invention, then how do we interpret the claim? As being limited to “preparing a compound of formula (I)”? If this is the interpretation of claim 42 that Appellant seeks, it had the opportunity to amend the claim by cancelling the claim preamble. “An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). [T]he PTO gives a disputed claim term its broadest reasonable interpretation during patent prosecution. . . . The “broadest reasonable interpretation” rule recognizes that “before a patent is granted the claims are readily amended as part of the examination process.” Burlington Indus. v. Quigg, 822 F.2d Appeal 2020-005067 Application 16/166,893 10 1581, 1583 (Fed. Cir. 1987). Thus, a patent applicant has the opportunity and responsibility to remove any ambiguity in claim term meaning by amending the application. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). The Examiner also found that the claims lacked enablement because a skilled worker would not know how to make the claimed pharmaceutical agent because its structure is not recited in the claim. Office Act. 3. The Examiner found that the Specification “need[s] to teach the skilled artisan the nature of the pharmaceutical agent prepared by the instant claims and the starting materials, reagents and method steps of making the pharmaceutical agent.” Id. We agree. In the Appeal Brief, Appellant has not pointed to any teaching in the Specification of how to convert a compound of formula (I) to a pharmaceutical agent. As explained by the Examiner, “[t]he disclosure is limited to making the compound of formula (I) and there is not even a single example or direction present for making the pharmaceutical agent starting with the compound of formula (I).” Office Act. 3. Appellant contends that the Examiner did not meet the burden in establishing a lack of enablement and did not properly address the Wands factors in making the enablement rejection. Appeal Br. 19; Reply Br. 12. Appellant appears to believe that a discussion of all the factors enumerated in In re Wands, 858 F.2d 731, 736–37 (Fed. Cir. 1988) is the only way to establish a lack of enablement. Appeal Br. 18. This is not true. The Wands factors are illustrative but “not mandatory.” Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213 (Fed. Cir. 1991). The Examiner properly found the claim to lack enablement because the claim did not identify the structure of the claimed pharmaceutical agent. Office Act. 3. In simple terms, how can the Specification enable the ordinary skilled Appeal 2020-005067 Application 16/166,893 11 worker to make an unknown structure? The Examiner is correct: the full breadth of the claim 42 is not enabled. Appellant’s only substantive response in the Appeal Brief is that both the background and Example 7 mention synthesis of active pharmaceutical ingredients (APIs) as a problem to be solved. Myriad types and uses of APIs were well-known in the art and therefore preferably omitted from the specification. Thus, the Office has failed to consider what a skilled artisan would have already known, based on the state of the art, before looking at the present specification. Appeal Br. 20. We do not agree that the statement in Example 7 that the “decarboxylative allylic alkylation of lactams is particularly useful and important, given the prevalence of quaternary N-heterocycles in biologically active alkaloids and their potential importance in pharmaceutical agents” (Spec. 32–33) provides enablement for a claim which does not even identify the structure of the pharmaceutical agent that Appellant is claiming. In the Reply Brief, Appellant additionally cites Example 8 of the Specification. Reply Br. 16. This is new evidence and a new argument, which is not permitted in a Reply Brief, unless responsive to argument made by the Examiner in the Answer. 37 C.F.R. § 41.41(b). The Answer did not change the basis of the Examiner’s rejection or make new arguments that Appellant could not have addressed in the Appeal Brief in response to the Office Action from which the appeal was brought. Therefore, we shall not consider this new evidence and new argument. Nonetheless, we note that even if the Specification enables the manufacture of certain specific pharmaceutical agents, such teaching is not commensurate with the full Appeal 2020-005067 Application 16/166,893 12 scope of claim 42 which is not limited to the preparation of a particular structure that is a pharmaceutical agent. “[A] specification disclosure which contains a teaching of the manner and process of making and using an invention in terms which correspond in scope to those used in describing and defining the subject matter sought to be patented must be taken as being in compliance with the enablement requirement” of 35 U.S.C. § 112(a) “unless there is a reason to doubt the objective truth of the statements contained therein which must be relied on for enabling support.” In re Marzocchi, 439 F.2d 220, 223 (CCPA 1971) (emphasis added). Here, the disclosure of how to make intermediates for preparing the claimed pharmaceutical agent of indeterminate structure does not correspond in scope to the subject matter of claim 42. For the foregoing reasons, the rejections under §112(a) and (b) of claim 42 is affirmed. Claims 44–63 were not separately argued and fall with claim 42. 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 42,44–63 112(a) Lack of enablement 42, 44–63 42, 44–63 112(b) Indefiniteness 42, 44–63 Overall Outcome 42, 44–63 TIME PERIOD Appeal 2020-005067 Application 16/166,893 13 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation