Ex Parte Cornec et alDownload PDFPatent Trial and Appeal BoardOct 19, 201613967621 (P.T.A.B. Oct. 19, 2016) Copy Citation 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"). 2 Appeal2015-000755 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 3 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, 4 Appeal2015-000755 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. 5 Appeal2015-000755 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. 6 Appeal2015-000755 Application 12/782,269 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. 7 Appeal2015-000755 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 8 Copy with citationCopy as parenthetical citation