California Institute of Technology

Patent Trials and Appeals Board

Oct 20, 2020

2020005067 (P.T.A.B. Oct. 20, 2020)

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.
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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
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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.
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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
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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 (+)-
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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
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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.”
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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),
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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
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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
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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
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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
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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