Ex Parte Brohm et alDownload PDFPatent Trial and Appeal BoardDec 15, 201714365424 (P.T.A.B. Dec. 15, 2017) 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. 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). 2 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 4 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. 5 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 6 Copy with citationCopy as parenthetical citation