Ex Parte Sauerberg et al

Patent Trial and Appeal Board

Jan 10, 2017

14016442 (P.T.A.B. Jan. 10, 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.
14/016,442 09/03/2013 Per Sauerberg 7253.234-US 7006
119944 7590 01/12/2017
vTv The.ranftiitips T T C
EXAMINER
4170 Mendenhall Oaks Parkway
High Point, NC 27265
COUGHLIN, MATTHEW P
ART UNIT PAPER NUMBER
1626
NOTIFICATION DATE DELIVERY MODE
01/12/2017 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):
patentmail @ vtvtherapeutics. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PER SAUERBERG, PAVEL PIHERA, ZDENEK POLIVKA,
MIROSLAV HAVRANEK, INGRID PETTERSSON, and
JOHN PATRICK MORGENSEN
Appeal 2015-007064
Application 14/016,4421
Technology Center 1600
Before MELANIE L. MCCOLLUM, ULRIKE W. JENKS and
DAVID COTTA, Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to a method of arresting development of a disease-state, slowing
development of a disease state, causing regression of a disease-state, or
causing regression of a symptom of a disease-state, wherein the disease-state
is type I diabetes, type II diabetes, impaired glucose tolerance, insulin
resistance, or obesity. The Examiner rejected the claims on appeal on the
ground of non-statutory obviousness type double patenting.
We affirm.
1 According to Appellants, the real party in interest is vTv Therapeutics.
Apr. 11, 2016 Statement of Ownership.
Appeal 2015-007064
Application 14/016,442
STATEMENT OF THE CASE
The claims stand rejected as follows:
Claims 1—5 on the ground of non-statutory obviousness-type double
patenting over claims 1—24 of the ‘613 Patent.2
Claims 6—9 on the ground of non-statutory obviousness-type double
patenting over claims 1—11 of the ‘016 Patent.3
Claims 10-15 on the ground of non-statutory obviousness-type double
patenting over claims 1—12 of the ‘993 Patent.4
Appellants do not challenge the Examiner’s conclusion that the claims
of the present application would have been obvious over the claims of the
‘613, ‘016 and ‘993 patents. Rather, Appellants argue that the safe harbor
provision of 35 U.S.C. § 121 shields the present application from double
patenting. This case thus turns on the resolution of a single issue: is the
pending application entitled to the benefit of the safe harbor set forth in
35 U.S.C. § 121 such that the Examiner cannot rely on ‘613, ‘016, and ‘993
patents to reject the pending application on the grounds of non-statutory
obviousness-type double patenting?
FINDING OF FACTS/SUMMARY OF PROSECUTION HISTORY
1. On October 23, 2008, Appellants filed Application No.
12/097,564 (“the Original Application”) with claims directed to both
2 Sauerberg et al., US Patent No. 7,943,613 B2, issued May 17, 2011 (“the
‘613 Patent”).
3 Sauerberg et al., US Patent No. 8,362,016 B2, issued Jan. 29, 2013 (“the
‘016 Patent”).
4 Sauerberg et al., US Patent No. 8,551,993 B2, issued Oct. 8, 2013 (“the
‘993 Patent”).
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Application 14/016,442
compounds and methods of use. The Original Application is the great
grandparent of the present application. During prosecution of the Original
Application, the Examiner issued a restriction requirement requiring
Appellants to elect from among two groups of claims for further
prosecution: Group I (claims 1—21 and 23—27) drawn to compounds, and
Group II (claims 30—32) drawn to methods of use. App. Br. 10.
2. The ‘613 patent, with claims directed to compounds within
Group I, issued from the Original Application on May 17, 2011. Id.
3. Prior to the issuance of the ‘613 patent, Appellants filed a
continuation application with claims directed to the subject matter of Group
I (“the First Continuation Application”). The First Continuation Application
resulted in the ‘016 patent, which issued on January 29, 2013. Id. at 11.
4. Prior to the issuance of the ‘016 patent, Appellants filed a
second continuation application with claims directed to the subject matter of
Group I (“the Second Continuation Application”). The Second Continuation
Application resulted in the ‘993 patent, which issued on October 8, 2013.
Id.
5. Prior to the issuance of the ‘993 patent, but subsequent to the
issuance on the ‘613 and ‘016 patents, Appellants filed the present
application with claims directed to the subject matter of Group II (“the
Present Application”). The Present Application was designated a divisional
application based on the restriction requirement mailed in connection with
the Original Application. Id.
ANAFYSIS
The Examiner rejected claims 1—15 on the grounds of non-statutory
obviousness-type double patenting. Claims 1—5 were rejected over the ‘613
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Patent, claims 6—9 were rejected over the ‘016 Patent, and claims 10—15
were rejected over the ‘993 Patent. Ans. 3, 4, and 6. In rejecting these
claims, the Examiner found that the safe harbor provision of 35 U.S.C. § 121
did not apply. Ans. 7—16. The safe harbor provision of 35 U.S.C. § 121
states:
A patent issuing on an application with respect to which
a requirement for restriction under this section has been
made, or on an application filed as a result of such a
requirement, shall not be used as a reference either in the
Patent and Trademark Office or in the courts against a
divisional application or against the original application
or any patent issued on either of them, if the divisional
application is filed before the issuance of the patent on
the other application.
35 U.S.C. § 121 (emphasis added). The Examiner found that the safe harbor
provision did not shield the present application from double patenting
rejections with respect to the ‘613, ‘016, and ‘993 patents because the
applications that led to these patents were not filed “as a result of’ a
restriction requirement and because the present application was not filed
“before the issuance of the patent on the other [restricted] application.” Ans.
13—14, see generally 7—16.
Issue 1: Did the ‘016 and ‘993 patents issue from applications filed “as a
result” of a restriction requirement?
The “as a result of’ requirement of the safe harbor provision must be
satisfied with respect to both the present application and reference patents
(i.e. the ‘613, ‘016, and ‘993 patents). Boehringer Ingelheim International
GmbHv. Barr Laboratories, Inc., 592 F.3d 1340, 1353 (Fed. Cir. 2010)
(“We agree with the district court that the ‘as a result of requirement must
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be satisfied by both the '086 reference patent and the '812 challenged
patent.”).
The ‘613 patent issued from the Original Application. FF1 and FF2.
The ‘016 and ‘993 patents issued from continuation applications with claims
directed to the same subject matter as is claimed in the ‘613 patent. FF3 and
FF4. The restriction requirement thus did not preclude Appellants from
pursuing the claims obtained in the ‘016 and ‘993 patents in the Original
Application. As the restriction requirement was not responsible for these
applications being filed separately from the Original Application, we fail to
see how these applications can be considered to meet the “as a result of a
restriction requirement” of the safe harbor provision. See, Gerber Garment
Technology, Inc. v. Lectra Systems, Inc., 916 F.2d 683, 687 (Fed. Cir. 1990)
(“The prohibition against use of a parent application ‘as a reference’ against
a divisional application applies only to the divisional applications that are
‘filed as a result of a restriction requirement. Plain common sense dictates
that a divisional application filed as a result of a restriction requirement may
not contain claims drawn to the invention set forth in the claims elected and
prosecuted to patent in the parent application.”); St. Jude Medical, Inc. v.
Access Closure, Inc., 729 F.3d 1369, 1379 (2013) (finding that application
of the safe harbor provision required determining “whether any of the same
restricted inventions are claimed in the challenged patent (the Janzen patent),
the reference patent (the sibling patent), or the restricted patent (the
grandparent patent)”).
Appellants contend that “the ‘as a result of requirement does not
prohibit intervening continuation applications,” App. Br. 9, and that “there is
no requirement under § 121 that the divisional application being shielded by
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the safe harbor must immediately follow the parent.” Id. at 15 (citing
Boehringer, 592 F.3d at 1352). We do not disagree. But, in order for the
safe harbor provision to apply, the applications at issue must still have been
filed “as a result of a restriction requirement.” Appellants have not provided
persuasive argument or evidence establishing that the applications that led to
the issuance of the ‘016 and ‘993 patents were attributable to the restriction
requirement filed in the Original Application. Accordingly we find that the
safe harbor provision does not shield the present application from double
patent rejections based on the ‘016 and ‘993 patents.
Issue 2: Was the present application filed before the issuance of the (613
patent?
The safe harbor provision expressly states that it applies only “if the
divisional application is filed before the issuance of the patent on the other
application.” 35 U.S.C. § 121 (emphasis added). Appellants contend that
the present application is entitled to the filing date of the Original
Application under 35 U.S.C. § 120, which describes circumstances under
which an application is entitled to the benefit of the filing date of an earlier
filed application. App. Br. 15. Appellants argue that because the present
application is entitled to the filing date of the Original Application, and
because the filing date of the Original Application predates the issue date of
each of the reference patents relied upon by the Examiner (including the
patent issuing from the Original Application), the requirement that the
divisional application be filed “before the issuance of the patent on the other
application” does not preclude Appellants from relying upon the safe harbor
protection afforded by 35 U.S.C. § 121. Id. at 15—16.
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Appellants’ arguments present the question: does the phrase “the
divisional application is filed” in the safe harbor provision of 35 U.S.C.
§121 refer to the actual date on which the divisional application is filed or to
the effective filing date of the divisional application under 35 U.S.C. § 120.
We find that the phrase “the division application is filed” refers to the actual
date on which the divisional application is filed.
The Federal Circuit requires strict application of the safe harbor
provision of section 121. G.D. Searle LLC v. Lupin Pharmaceuticals Inc.,
790 F.3d 1349, 1354 (Fed. Cir. 2015) (“ We apply ‘a strict test’ for
application of section 121, ‘[g]iven the potential windfall [a] patent term
extension could provide to a patentee.’”) (citing Geneva Pharm., Inc. v.
GlaxoSmithKline PLC, 349 F3d 1373, 1382 (Fed. Cit. 2003); and Amgen
Inc. v. F. Hoffman-La-Roche Ltd., 580 F.3d 1340, 1353 (Fed. Cir. 2009)).
Appellants’ interpretation of 35 U.S.C. § 121 would render
meaningless the requirement to file the divisional application “before the
issuance of the patent on the other application.” A properly filed divisional
application necessarily complies with the requirements of 35 U.S.C. § 120
and will thus always be entitled to the effective filing date of its parent
application. If the relevant filing date for determining whether the safe
harbor applies is the effective rather than the actual filing date of the
divisional application, what would be the point of requiring a divisional
application to be filed “before the issuance of the patent on the other
application?” A divisional application will always be “effectively filed”
before a patent issues from the restricted application. A statutory
interpretation, like that proposed by Appellants, that renders entire
provisions superfluous is unlikely to be the correct. Hibbs v. Winn, 542 U.S.
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88, 101 (2004) (“ ‘A statute should be construed so that effect is given to all
its provisions, so that no part will be inoperative or superfluous, void or
insignificant. , . (quoting N. Singer, Statutes and Statutory Construction
§ 46.06, pp. 181-186 (rev. 6th ed. 2000)).
Moreover, the effective filing date of a patent application has little
relevance to a double patenting rejection. See, In re Dunn, 349 F.2d 433,
436 (C.C.P.A. 1965) (finding that a Rule 131 affidavit filed in an attempt to
antedate the reference patents in a double patenting rejection was
“inappropriate to the facts here since the rejection was based on the claims
rather than on the disclosure of the applications.”). Given that the effective
filing date of a patent application is largely irrelevant in the context of a
double patenting rejection, it would be incongruous to look to the effective
filing date to determine the availability of a patent as a double patenting
reference with respect to the safe harbor provision.
Appellants argue that the timeline in Boehringer Inhelheim Intern.
GmbHv. Barr Laboratories, Inc., 592 F.3d 1340 (Fed. Cir. 2010) supports
their interpretation of the statute because a patent issued from an application
in which the restriction requirement was raised before the application that
resulted in the challenged patent was filed. App. Br. 16. But the Boehringer
court did not address the requirement that the divisional be filed before the
issuance of the other patent. And the application for the patent challenged in
Boehringer (US Patent No. 4,886,812 (“the ‘812 patent”)) was filed before
the application that resulted in the reference patent (US Patent No. 4,843,086
(“the ‘086 patent”)). Boehringer, 592 F.3d at 1344. Boehringer thus does
not speak to the issue present here: whether the safe harbor provision shields
a divisional application from the double patenting effect of a patent that
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issued before the divisional application was filed. Accordingly, we find that
the safe harbor provision does not shield the present application from double
patent rejections based on the ‘613 patent.
SUMMARY
For these reasons and those set forth in the Examiner's Answer, and
the Final Office Action, the Examiner's final decision to reject claims 1—15
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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