Ex Parte Brohm et al

Patent Trial and Appeal Board

Dec 15, 2017

14365424 (P.T.A.B. Dec. 15, 2017)

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.
14/365,424 06/13/2014 Dirk Brohm ES-6487-0010 8528
143374 7590 12/19/2017
Nixon & Vanderhye PC / Bayer
901 N. Glebe Rd., 11th Floor
Arlington, VA 22203
EXAMINER
BALASUBRAMANIAN, VENKATARAMAN
ART UNIT PAPER NUMBER
1624
NOTIFICATION DATE DELIVERY MODE
12/19/2017 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):
ptomail@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIRK BROHM,
MELANIE HEROULT, MARIE-PIERRE COLLIN, WALTER HUBSCH,
MARIO LOBELL, KLEMENS LUSTIG, SYLVIA GRUNEWALD,
ULF BOMER, and VERENA VOHRINGER
Appeal 2016-007076
Application 14/3 65,4241
Technology Center 1600
Before FRANCISCO C. PRATS, TAWEN CHANG, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to chemical
compounds and methods for their synthesis. The Examiner rejected the
claims for obviousness-type double patenting.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The sole rejection before us for review is the Examiner’s provisional
rejection of claims 1—4, 9, and 10 for obviousness-type double patenting
1 Appellants state that the “real party in interest is Bayer Intellectual
Property GmbH, the assignee of record.” Br. 3.
Appeal 2016-007076
Application 14/365,424
over claims 13—16 of Application No. 13/715,553 (“the ’553 application”).
Final Action 11—13; Ans. 2—6.
Claims 13—16 of the ’553 application have issued as claims 1—4 of
U.S. Patent No. 9,206,184 B2 (issued December 8, 2015; “the ’184 patent”).
See the ’553 application, Notice of Allowability (entered July 20, 2015).
The Examiner’s rejection, therefore, is no longer provisional.
Appealed claim 1 is representative of the rejected claims, and appears
in the Claims Appendix of the Appeal Brief. See Br. 10—14.
DISCUSSION
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In the present case, Appellants contend that the Examiner erred in
maintaining the obviousness-type double patenting rejection because the
Examiner failed to make the factual findings required to explain why the
compound of claim 1 would have been obvious to an ordinary artisan in
view of the claims of the ’ 184 patent. Br. 7—9.
As our reviewing court has explained, however, the judicially-created
doctrine of obviousness-type double patenting “prohibits the issuance of
claims in a second patent that are not patentably distinct from the claims of
the first patent. A later patent claim is not patentably distinct from an earlier
claim if the later claim is obvious over, or anticipated by, the earlier claim.”
In re Hubbell, 709 F.3d 1140, 1145 (Fed. Cir. 2013) (emphasis added;
internal quotations and citations removed).
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Appeal 2016-007076
Application 14/365,424
In the present case, the Examiner contends, among other things, that
the “compound of claim 13 of the copending application [which issued as
claim 1 of the ’814 patent] anticipates [the] instant compound.” Ans. 5. In
addition, the Examiner contends that, “[although instant claims relate to
[the] genus of compound of formula I, the species claimed in claim 13 and
depicted in claim 15 of the copending application [which issued as claims 1
and 3 of the ’184 patent, respectively,] is also claimed in the instant claims.”
Id.
Appellants do not identify, nor do we discern, error in the Examiner’s
contention.
In that regard, we note that claim 3 of the ’ 184 patent reads as
follows:
3. A compound of formula
V.
>"
T
%
L
The ’184 patent, col. 188,11. 1—20.
Rejected claim 1 recites a compound of formula (I):
3
Appeal 2016-007076
Application 14/365,424
R*
which, as is evident, has the same core ring structure as the patented
compound, and in which R1, R2, G1, and G2 may be any of a variety of
moieties. Br. 10—15.
In particular, rejected claim 1 specifies that the substituent at position
R1 may be methyl, and position R2 may be methoxy (Br. 10), which are
precisely the moieties present at the corresponding positions of claim 3 of
the ’184 patent, seen above.
Rejected claim 1 specifies that the substituent at position G1 may be
the group -CH2-OR3 in which R3 is Ci-alkyl (i.e., methyl) (Br. 10), which is
also the moiety present at the corresponding position of the compound of
claim 3 of the ’184 patent, as seen above.
Rejected claim 1 also specifies that the G2 substituent may be the
group -CH2-NR9R10, in which R9 and R10 are joined and, taken together with
the nitrogen atom to which they are attached, form a monocyclic, saturated
heterocycloalkyl ring that may have 6 members, and that may contain
unsubstituted nitrogen as a second ring heteroatom, and which
hetercycloalkyl ring may be substituted with an oxo group on one of the ring
carbon atoms. Br. 12—14. As seen in claim 3 of the ’184 patent, reproduced
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Appeal 2016-007076
Application 14/365,424
above, the patented compound includes that moiety at the corresponding
position.
Because the compound recited in claim 3 of the ’ 184 patent, thus,
includes moieties at each of the positions which correspond to the
substituents recited in Appellants’ claim 1, we discern no error in the
Examiner’s finding that the compound of claim 3 of the ’184 patent
anticipates the compound recited in Appellants’ claim 1. Accordingly,
although the scope of the claims of the ’ 184 patent is not identical with the
scope of representative claim 1 on appeal herein, a preponderance of the
evidence supports the Examiner’s conclusion that representative claim 1 is
not patentably distinct from the claims of the ’ 184 patent. We, therefore,
affirm the Examiner’s rejection of claim 1 for obviousness-type double
patenting. Because they were not argued separately, the remaining claims
fall with claim 1.
SUMMARY
Because the claims in the ’553 application forming the basis of the
Examiner’s provisional rejection have now issued as claims 1—4 of the ’184
patent, the Examiner’s obviousness-type double patenting rejection is no
longer provisional.
For the reasons discussed above, we affirm the Examiner’s
obviousness-type double patenting rejection of claims 1—4, 9, and 10 over
claims 1—4 of the ’ 184 patent.
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Appeal 2016-007076
Application 14/365,424
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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