Ex Parte Cornec et al

Patent Trial and Appeal Board

Oct 19, 2016

13967621 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/967,621 08/15/2013 Michel Comee
23413 7590 10/21/2016
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CDS0105USD 7766
EXAMINER
ROSENTHAL, ANDREWS
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
10/21/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHEL CORNEC, BETH ANN CORREA,
MICHELLE HARNISH, JOANE. HARVEY, CAROLINE LYNCH,
DANIELLE SCHWARTZ, and DEBORAH L. WATSON1
Appeal2015-000847
Application 13/967,621
Technology Center 1600
Before LORA M. GREEN, FRANCISCO C. PRATS, and RYAN H. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a method of treating throat discomfort. Claims 1-9 and
11-17 are on appeal as rejected under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Real Party in Interest is Inter Continental Great Brands LLC
(previously known as Kraft Foods Global Brands, LLC), which is a
subsidiary of Mondelez International Inc. Br. 2.
Appeal2015-000755
Application 12/782,269
STATEMENT OF THE CASE
The appealed claims can be found in the Claims Appendix of the
Appeal Brief. Claim 1 is representative, and reads as follows:
1. A method of treating throat discomfort, comprising
administering to a subject in need thereof an effective amount of
N-ethyl-2,2-diisopropylbutanamide.
Br. 13 (Claims App'x).
The following rejections are on appeal:
Claims 1-9 and 11 stand rejected under 35 U.S.C. § 103(a) over
Witkewitz2 and Rowsell. 3 Final Action 4.
Claims 1-9, 11-13, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) over Witkewitz, Rowsell, and Isse. 4 Final Action 12.
Claims 1-9, 11, 14, and 17 stand rejected under 35 U.S.C. § 103(a)
over Witkewitz, Rowsell, and Bealin.5 Final Action 14.
We adopt the Examiner's findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer. Any findings of fact set forth below are provided only to highlight
certain evidence.
2 U.S. Patent Application Pub. No. US 2006/0159819 Al (published July 20,
2006) (hereinafter "Witkewitz").
3 British Patent No. 1,421,744 (published Jan. 21, 1976; issued to Rowsell,
et al.) (hereinafter "Rowsell").
4 U.S. Patent Application Pub. No. US 2008/0213459 Al) (published Sept.
4, 2008) (hereinafter "Isse").
5 U.S. Patent No. US 6,306,429 Bl (issued Oct. 23, 2001, to Bealin-Kelly)
(hereinafter "Bealin").
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Application 12/782,269
FINDINGS OF FACT
FF 1. Witkewitz disclosed, "[p ]hysiological cooling agents
include menthyl succinate, acyclic carboxamides, menthyl lactate, N-
substituted p-menthane carboxamides, and mixtures thereof. [A]
particularly useful cooling agent[ is] WS-3 [n-ethyl-p-menthane-3-
carboxamide]." Witkewitz i-f 17; see also Final Action 5 (generally
discussing Witkewitz).
FF2. Rowsell disclosed, "[t]his invention relates to
compounds having a physiological cooling effect on the skin and on the
mucous membranes of the body, particularly the mucous membranes of
the nose and bronchial tract." Rowsell 1: 10-15; see also Final Action
6-7 and Ans. 11-14 (discussing Rowsell).
FF3. Rowsell disclosed, "[t]ypical amides according to this
invention are listed below in the Table together with an indication of
the cooling activity; the more stars the greater degree of cooling
produced by a given quantity of the compound." Rowsell 2: 1-5; see
also Final Action 6-7 and Ans. 11-14 (discussing Rowsell). Within
the Table, Rowsell disclosed, among others, WS-23, or 2,isopropyl-N-
2,3-trimethylbutanamide, and N-ethyl-2,2-diisopropylbutanamide,
each of which it awarded five out of five stars for cooling activity.
Rowsell 2: 10-31; see also Final Action 6-7 and Ans. 11-14 (discussing
Rowsell); see also Br. 7-10 (Appellants do not dispute Rowsell
discloses the claimed compound).
FF4. Rowsell disclosed:
The compounds of the above formula [Table] find utility in a
wide variety of manufactured products for consumption by or
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Appeal2015-000755
Application 12/782,269
application to the human body. Typical products into which the
compounds of this invention may be incorporated to give a
physiological cooling effect upon use are as follows: ... [ e ]dible
or potable compositions including ... confectionary, chewing
gum; . . . [ m] edicaments including . . . cough mixtures, throat
1 " ozenges ....
Rowsell 2:32-55; see also Final Action 6-7 and Ans. 11-14 (discussing
Rowsell).
DISCUSSION
We discuss all obviousness rejections together because Appellants
presented a unified argument thereover. Appellants argue only with respect
to claim 1, therefore, all claims fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv). Appellants do not persuade us that the Examiner failed to
establish a prima facie case that claim 1 would have been obvious. We
address Appellants' arguments below.
Appellants argue "Rowsell does not teach or suggest which
compounds are best for throat cooling." Br. 8. Appellants argue that
Witkewitz establishes that different compositions can have different types of
cooling effects in different areas of the mouth. Br. 9. Appellants contend
this makes the claims nonobvious. Id.
This argument is not persuasive because claim 1 does not require the
"best" compound for throat cooling. It requires only that the compound can
treat throat discomfort. "[J]ust because better alternatives exist in the prior
art does not mean that an inferior combination is inapt for obviousness
purposes." In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012). The
evidence indicates that each of the 5-star compounds disclosed by Rowsell,
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Application 12/782,269
one of which is the compound required by claim 1, have a physiological
cooling effect on the mucous membranes of the body, particularly of the
nose and bronchial tract, i.e., the throat. FF2. Therefore, Rowsell teaches
and suggests that N-ethyl-2,2-diisopropylbutanamide and WS-23 would treat
throat discomfort, as required by claim 1, and also specifically teaches that it
may be used in throat lozenges. See FF3 and FF4.
Appellants argue "Rowsell does not teach or suggest that N-ethyl-2,2-
diisopropylbutanamide and WS-23 are functionally equivalent, particularly,
with respect to their throat cooling effect." Br. 8. Appellants contend that
the Specification, at Table 1, establishes that N-ethyl-2,2-diisopropyl-
butanamide is surprisingly better than WS-23 at throat cooling. Br. 9.
Appellants' argument is not persuasive because Rowsell expressly
suggests that N-ethyl-2,2-diisopropylbutanamide and WS-23 have the same
cooling activity, impact similar if not the same parts of the human anatomy,
and could be used in the same products for consumption or application by or
to humans typically used to treat a sore throat. It is obvious to those skilled
in the art to substitute one known equivalent for another. See In re
Omeprazole Patent Litigation, 483 F.3d 1364, 1374 (Fed. Cir. 2007)
("[T]his court finds no ... error in [the] conclusion that it would have been
obvious to one skilled in the art to substitute one ARC [alkaline reactive
compound] for another."). Thus, it would be obvious to use the compound
of the claims, disclosed by Rowsell, in any method disclosed by Witkewitz
that used WS-23; however, Rowsell, itself, teaches the use of the claimed
compound in sore throat treatment products, which likely makes such a
substitution not wholly necessary, even though it would be reasonable.
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Application 12/782,269
The Table pointed to by Appellants as evidence, which relays
anecdotal reports of 6 people regarding how the tested compounds provided
cooling sensations in the mouth, does not indicate that WS-23 failed to treat
throat discomfort, but only that N-ethyl-2,2-diisopropylbutanamide may be
better, which is not persuasive. See Spec. 20. In any event, Rowsell
expressly disclosed using N-ethyl-2,2-diisopropylbutanamide as a cooling
ingredient in a throat lozenge to provide a cooling effect to the mucous
membranes of the bronchial tract, i.e., the throat; thus, while substituting the
this compound for Witkewitz's WS-23 would be obvious, it is likely
unnecessary to render claim 1 obvious.
"[B]y definition, any superior property must be unexpected to be
considered evidence of non-obviousness." Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1371 (Fed. Cir. 2007). Here, based on Rowsell, the soothing
effects provided by N-ethyl-2,2-diisopropylbutanamide are not unexpected.
The fact that Rowsell does not distinguish between this compound and WS-
23 in greater detail is not determinative. Rowsell suggests that these two
compounds are equivalent alternatives so that the claimed compound would
reasonably be substituted for the WS-23 of Witkewitz, if necessary.
Applicants argue "the ability of one agent to cool more effectively
(particularly, in throat) than another is of paramount importance for reaching
to the claimed invention," and the cited art does not sufficiently teach
"regioselectivity" or "throat cooling preference," as required by the claims.
Br. 8. Appellants also argue that the claims require "selecting a group of
subject who are in need of [throat discomfort] treatment." Br. 9.
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This argument is not persuasive because there is no limitation in claim
1 requiring "regioselectivity" to the throat. Further, so long as relief of
throat discomfort could be expected of a compound, it could be considered
to treat throat discomfort. Such an effect would be expected from any of the
compounds disclosed in the Table of Rowsell, but particularly N-ethyl-2,2-
diisopropylbutanamide and WS-23 as they each were awarded 5 stars for
cooling activity and were suggested to be incorporated into throat lozenges,
where they could have a physiological cooling effect on the mucous
membranes of the nose and bronchial tract. FF2-FF4. Whether the
Specification's Table 1 indicates one of these two compounds might be more
targeted to the throat than the other is not determinative because there is no
evidence that the other would not treat throat discomfort. See Spec. 20.
And, in any event, as discussed above, Rowsell, on its own, discloses and
suggests using N-ethyl-2,2-diisopropylbutanamide in a throat lozenge, i.e., a;
product for treating throat discomfort.
For the above reasons, we find that the preponderance of evidence
supports the Examiner's determination of obviousness. We, therefore,
affirm the rejection.
SUMMARY
The rejection claims 1-9 and 11 under 35 U.S.C. § 103(a) over
Witkewitz and Rowsell is affirmed.
The rejection of claims 1-9, 11-13, 15, and 16 under 35 U.S.C.
§ 103(a) over Witkewitz, Rowsell, and Isse is affirmed.
The rejection of claims 1-9, 11, 14, and 17 under 35 U.S.C. § 103(a)
over Witkewitz, Rowsell, and Bealin is affirmed.
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Application 12/782,269
All claims fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
TIME PERIOD FOR RESPONSE
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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