Ex Parte LI et al

Patent Trial and Appeal BoardApr 11, 2016

12172174 (P.T.A.B. Apr. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/172,174 07/11/2008 23914 7590 04/13/2016 HENRY HADAD BRISTOL-MYERS SQUIBB COMPANY PA TENT DEPARTMENT POBOX4000 PRINCETON, NJ 08543-4000 FIRST NAMED INVENTOR Yong Li 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. Kl0078CNT1 4394 EXAMINER SHIAO, REI TSANG ART UNIT PAPER NUMBER 1628 NOTIFICATION DATE DELIVERY MODE 04/13/2016 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): patents@bms.com wendy.torres@bms.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YONG LI, KURT SUNDERMANN, LI TANG, and DAVID MYLES 1 Appeal2014-001430 Application 12/172,17 4 Technology Center 1600 Before ERIC B. GRIMES, JEFFREY N. FREDMAN and JOHN E. SCHNEIDER, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134 involving claims to epothilone derivatives and compositions containing the same, which have been rejected as obvious. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. STATEMENT OF THE CASE Claims 1 and 8 are on appeal. Claim 1 is illustrative and reads as follows: 1 The real party-in-interest is identified as Bristol-Myers Squibb Company. Appeal Br. 2. Appeal2014-001430 Application 12/172, 174 1. The compound or a pharmaceutically acceptable salt or prodrug thereof. DISCUSSION Issue The Examiner has rejected claims 1 and 8 under 35 U.S.C. Â§ 103(a) as being unpatentable over Danishefsky et al., (US 6,921,769, issued July 26, 2005)("Danishefsky"). The Examiner finds that [ o ]ne having ordinary skill in the art would find the claims 1 and 8 prima facie obvious because one would be motivated to employ the compounds/ compositions of Danishefsky et al. '769 to obtain instant claimed compounds/ compositions of the formula of claim 1. . .. It is noted that the instant [ ] moiety isoxazole of the formula in claim 1 is an isomer moiety of oxazole of formula (I) of Danishefsky et al. '769. Particularly, Danishefsky et al. '769 discloses an isomer compound of the instant 2 Appeal2014-001430 Application 12/172, 174 invention, see column 80, lines 1-15. Moreover, nothing unobvious is seen in substituting the known claimed isomer for the structurally similar isomer (i.e., structure isomers or optical isomers), as taught by Danishefsky et al. '769, since such structurally related compounds suggest one another and would be expected to share common properties (i.e., chemotherapeutic agents or compositions) absent a showing of unexpected results. (Ans. 6-7.) Appellants contend that Danishefsky is devoid of any teaching or suggestion to create the compound recited in claim 1. Appeal Br. 6. Appellants argue that the Examiner improperly picked and chose from a wide number of substituents disclosed in Danishefsky to arrive at the claimed compound. Appeal Br. 6-10. Moreover, Appellants argue, Danishefsky teaches away from the claimed compound in that Danishefsky focuses primarily on thiazolyl substituents and Appellants further note that Danishefsky teaches that a thiazolyl substituted compound had the most advantageous properties of the compounds disclosed and would have been the selected lead compound. Appeal Br. 11-18. Finally, Appellants argue that when compared to the thiazolyl substituted compound, the compound of claim 1 showed unexpectedly superior properties. Appeal Br. 18. The issue with respect to this rejection is whether the Examiner has established that Danishefsky renders the claimed compound obvious within the meaning ofÂ§ 103(a). Findings of Fact FFl. The Examiner has rejected claims 1 and 8 under 35 U.S.C. Â§ 103(a) as obvious in view of Danishefsky et al. Ans. 4. 3 Appeal2014-001430 Application 12/172, 174 FF2. Danishefsky discloses and claims a compound with the following structure: which is an isomer of the compound in claim 1. Danishefsky, col. 18, 11. 1-14; claim 16. FF3. The compound of claim 1 on appeal and the compound disclosed by Danishefsky, and shown above in FF2, differ only in the order of their substituents in the oxazole or isooxazole ring structure at the top left of their respective formulas. Ans. 6. FF4. Danishefsky teaches that heteroalkyls useful in practice of his invention include oxazolyl and isooxazolyl groups. Danishefsky, col. 8, 11. 56----67. FF5. Danishefsky teaches that the compounds disclosed therein have anticancer properties, specifically cytotoxic or growth inhibitory effects on cancer cell lines. Danishefsky, col. 11, 11. 59---66. Principles of Law "The question of 'structural similarity' in chemical patent cases has generated a body of patent law unto itself. Particular types or categories of structural similarity without more have, in past cases, given rise to prima 4 Appeal2014-001430 Application 12/172, 174 facie obviousness; see, e.g., In re Dillon, 919 F.2d 688, 692-94 (Fed. Cir. 1990) (tri-orthoesters and tetra-orthoesters); In re May, 574 F.2d 1082, 1090 (CCPA 1978) (stereoisomers); In re Wilder, 563 F.2d 457, 461 (CCPA 1977) (adjacent homologs and structural isomers); In re Hoch, 428 F.2d 1341, 1342 (CCPA 1970) (acid and ethyl ester)." In re Jones, 958 F.2d 347, 349 (Fed. Cir. 1992) (footnote omitted). "When chemical compounds have 'very close' structural similarities and similar utilities, without more a prima facie case may be made. See, e.g., In re Wilder, 563 F.2d 457, 461(CCPA1977) (adjacent homologues and structural isomers); In re May, 574 F.2d 1082, 1090 (CCPA 1978) (stereoisomers); In re Hoch, 428 F.2d 1341, 1342 (CCPA 1970) (acid and ethyl ester). When such 'close' structural similarity to prior art compounds is shown, in accordance with these precedents the burden of coming forward shifts to the applicant, and evidence affirmatively supporting unobviousness is required." In re Grabiak, 769 F.2d 729, 731 (Fed. Cir. 1985). "While the lead compound analysis must, in keeping with KSR, not rigidly focus on the election of a single best compound, . . . the analysis still requires the challenger to demonstrate by clear and convincing evidence that one of ordinary skill in the art would have reason to select a proposed lead compound or compounds over other compounds in the prior art. 5 Appeal2014-001430 Application 12/172, 174 Daiichi Sankyo Co., Ltd v, Matrix Labs., Inc., 619 F.3d 1346, 1354 (Fed. Cir. 2010)( citations omitted). Analysis The Examiner finds that Danishefsky discloses an isomer of the compound of the instant invention. Ans. 7. Specifically, the Examiner found that "nothing unobvious is seen in substituting the known claimed isomer for the structurally similar isomer (i.e., structure isomers or optical isomers), as taught by Danishefsky et al. '769, since such structurally related compounds suggest one another and would be expected to share common properties (i.e., chemotherapeutic agents or compositions) absent a showing of unexpected results." Id. We agree. Danishefsky discloses an isomer of the claimed compound that is taught to have anti-cancer properties. FF5. In addition Danishefsky discloses that the oxazolyl moiety of the compound disclosed therein can be substituted with an isooxazolyl moiety such as that found in the claimed compound. FF4. Thus it would have been obvious to one skilled in the art to substitute the oxazolyl moiety found in the compound in Danishefsky with an isooxazolyl used in the present invention with a reasonable expectation that the resulting compound would have similar properties to Danishefsky' s compound. Appellants' arguments to the contrary have been considered and have been found unpersuasive. Appellants argue that one skilled in the art would select a thiazolyl substituted compound as the lead compound because the data in Danishefsky shows it to be the most promising compound. Appeal Br. 11-15. While Danishefsky does appear to teach that the thiazolyl 6 Appeal2014-001430 Application 12/172, 174 substituted compounds exhibit significant anti-cancer activity, Danishesky specifically claims only two of the disclosed compounds, the thiazolyl substituted compound and the oxazolyl substituted compound. Danishefsky, claims 1 and 16. Claiming the oxazolyl substituted compound demonstrates that Danishefsky considered the oxazolyl substituted compound to be a promising compound as well as the thiazolyl substituted compound. That Danishefsky specifically claims the oxazolyl substituted compound would lead one skilled in the art to consider the oxazolyl substituted compound as a lead compound along with the thiazolyl substituted compound. See, Daiichi Sankyo Co., Ltd v, Matrix Labs., Inc. 619 F.3d 1346, 1354 (Fed. Cir. 2010) (lead compound analysis need not focus on the selection of a single, best compound.) Turning to Appellants' argument that one skilled in the art would not have been motivated to use the oxazolyl substituted compound, while Danishefsky teaches thiazolyl substituted epothilones as preferred, as discussed above, Danishefsky teaches and claims an oxazolyl substituted epothilone derivative. FF2. This would motivate one skilled in the art to try a structurally similar compound with the expectation that it too would have similar properties. See, In re Dillon, 919 F.2d at 692-94. ("The art provided the motivation to make the claimed compositions with the expectation that they would have similar properties.") Appellants' evidence of unexpected results is also unpersuasive. The evidence submitted by Appellants compares the anti-cancer activity of the claimed compound with a thiazolyl substituted compound disclosed in 7 Appeal2014-001430 Application 12/172, 174 Danishefsky. Zhong Deel. 6. 2 However, no data has been offered comparing the claimed compound with closest prior art, the oxazolyl substituted compound disclosed in Danishefsky and cited by the Examiner. Since Appellants did not compare the claimed compound with the closest prior art, the data presented by Appellants fails to rebut a finding of prima facie obviousness. "Although it is well settled that comparative test data showing an unexpected result will rebut a prima facie case of obviousness, the comparative testing must be between the claimed invention and the closest prior art." In re Fenn, 639 F.2d 762, 765 (CCPA 1981). Conclusion of Law We conclude that the Examiner has established that Danishefsky renders the claimed compound obvious within the meaning of 35 U.S.C. Â§ 103(a). SUMMARY We affirm the rejection of claims 1 and 8 under 35 U.S.C. Â§ 103(a) as unpatentable over US 6,921,769 to Danishefsky at al. 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. Â§ 1.136(a). AFFIRMED 2 Declaration under 37 C.F.R. Â§ 1.132 of Ziyang Zhong, dated April 25, 2007. 8