Ex Parte Tice et alDownload PDFPatent Trial and Appeal BoardMay 31, 201711869474 (P.T.A.B. May. 31, 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. 11/869,474 10/09/2007 Colin M. Tice 2584.0020003/RWE/MFG 3069 80011 7590 06/02/2017 Sterne, Kessler, Goldstein & Fox P.L.L.C. 1100 New York Avenue, N.W. Washington, DC 20005 EXAMINER POPA, ILEANA ART UNIT PAPER NUMBER 1633 NOTIFICATION DATE DELIVERY MODE 06/02/2017 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): e-office @ skgf.com dlucas@intrexon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte COLIN M. TICE, ENRIQUE L. MICHELOTTI, and ROBERT E. HORMANN Appeal 2015-002913 Application 11/869,4741 Technology Center 1600 Before RACHEL H. TOWNSEND, DEVON ZASTROW NEWMAN, and DAVID COTTA, Administrative Patent Judges. COTTA, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to compounds of the general formula I: I 1 According to Appellants, the real party in interest is Intrexon Corporation. App. Br. 3. Appeal 2015-002913 Application 11/869,474 The Examiner rejected the claims on appeal under 35 U.S.C. § 103(a) as obvious. We reverse. STATEMENT OF THE CASE The Specification teaches that there is a “demand for ligands [involved in ecdysone receptor-based gene regulation systems] with higher activity than those currently existing],” Spec. 120. The Specification further teaches that there is a “continuing need to develop new classes of ligands which are neither steroidal nor diacylhydrazines” in order to “provide a variety of approaches to the control of gene expression utilizing [] known receptors.” Id. Appellants claim to have “discovered a class of ligands which have not previously been shown to have the ability to modulate the expression of transgenes.” Id. “The ligands of the present invention, when used with the ecdysone receptor complex which in turn is bound to the response element linked to an exogenous gene, provide the means for external temporal regulation of expression of the exogenous gene.” Id. at| 195. Claims 1—4 and 20-22 are on appeal. Claim 1, the only independent claim, is illustrative and reads, in relevant part, as follows: 1. A compound of formula I: Q R2 R3X X . R' N 'll" O R- H wherein . . . 2 Appeal 2015-002913 Application 11/869,474 R1 is selected from the group consisting of 2-methyl-3,4- methylenedioxyphenyl, 2-ethyl-3,4-methylenedioxyphenyl, 2- methyl-3,4-ethylenedioxyphenyl, 2-ethyl-3,4- ethylenedioxyphenyl, and 2-methyl-3,4-oxydimethylenephenyl R4 is unsubstituted or substituted phenyl or pyridyl, wherein the substituents are independently selected from the group consisting of cyano, nitro, halo, aminocarbonyl, aminothiocarbonyl, carboxy, formyl, hydroxy, amino, carbamoyl, (Ci-Ce)alkyl, . . . Claim 1 includes further language regarding the Q1, R2, R3, and R4 substituents, but that language is not relevant to the dispositive issues in this appeal. The Examiner rejected claims 1—4 and 20—22 under 35 U.S.C. § 103(a) as obvious over the combination of Michelotti,2 Nakamura,3 and Guan.4 ANALYSIS In finding claims 1—4 and 20—22 to be obvious, the Examiner finds that “Michelotti et al., Nakamura et al., and the claimed invention all use the same core structure approach and vary the substituents on the core to obtain compounds with activity that can be tested.” Ans. 14. The Examiner illustrated the similarities in core structure using the below structural diagrams. 2 Michelotti et al., US Patent No. 5,811,427, issued Sept. 22, 1998 (“Michelotti”). 3 Nakamura, EP 1 256 569 Al, published Nov. 13, 2002 (“Nakamura”). 4 Guan et al., Synthesis of Compound Libraries Based on 3,4- Diaminocyclopentanol Scaffolds, 2(4) Journal of Combinatorial Chemistry 297-300 (2000) (“Guan”). 3 Appeal 2015-002913 Application 11/869,474 instant Formula I Michellotti et al. Nakamura et al. Ans. 6. With respect to the claimed R1 substituent, the Examiner acknowledged that “Michelotti et al. teach alkyl at position 3 and not 2 and heterocycle at positions 4,5 and not 3,4 of the phenyl ring as required by the instant claims 1- 4 and 20-22.” Ans. 4. The Examiner nonetheless concluded: since the prior art teaches that varying the substituents provides the main source of diversity (see Guan et al., p. 297, column 1, first paragraph and Table 1; p. 299, Scheme 3), one of skill in the art would have found obvious to vary the position of the alkyl and heterocycle on the phenyl ring. And, since Michelotti et al. teach heterocycles with at least one oxygen atom, one of skill would have also found obvious to use heterocycles comprising two or more oxygen atoms and arrive at the claimed R1. One of skill in the art would have been motivated to do so with the purpose of obtaining compounds with improved activity. Ans. 4. With respect to the claimed R4 substituent, the Examiner acknowledged that Michelotti “do[es] not teach the R4 is a substituted phenyl as required by claims 1—4 and 20.” Id. The Examiner found, however, that “Nakamura et al. teach using substituted phenyl at R4 to obtain novel a,a- disubstituted-a-acylaminoketones pesticides having high safety and improved activity.” Id. at 5. The Examiner concluded: 4 Appeal 2015-002913 Application 11/869,474 It would have been obvious to one of skill in the art, at the time the invention was made, to use the general formula of Michelotti et al. as a central core and use different substituents, including replacing the substituted alkyl at R4 with the substituted phenyl of Nakamura et al. and using carbocycles, with a reasonable expectation of success. One of skill in the art would have been motivated to do so in order to obtain more efficient and safer pesticidal compounds. One of skill in the art would have reasonably expected to be successful in doing so because the prior art teaches that diverse compounds can be easily generated if the central core is known (see Guan et al., p. 297, column 1; Michelotti et al., column 1, lines 12-22). Id. Appellants argue, inter alia, that there is “no support for [the Examiner’s] contention that ‘[i]t would have been obvious to one of skill in the art to use the compound of Michelotti et al. as a central core to generate diverse substituted fungicidal compounds, with a reasonable expectation of success.’” App. Br. 22. Appellants further argue that the Examiner provided “no evidence or articulated reason why a skilled artisan would have modified a compound of Michelotti et al. and/or Nakamura et al. in the particular manner needed [to] arrive at [the] instantly claimed invention” {id. at 26) and that the Examiner’s obviousness rationale improperly finds the claimed compound obvious because it would have been “obvious to try.” Id. at 25-27. 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.” Appellants have persuaded us that the Examiner has not carried the burden of establishing that the claimed invention would have been obvious over the cited art. 5 Appeal 2015-002913 Application 11/869,474 In finding the claimed compounds obvious, the Examiner posits that the skilled artisan would have modified the fungicidal compounds encompassed by the Formula presented in Michelotti’s column 1 and (a) modified them at substituents corresponding to the claimed R2 4 substituents in light of teachings of Nakamura, which the Examiner posits shows safe pesticidal acylaminoketones of the same general formula as Michelotti’s fungicidal acylaminoketones and the claimed formula, as well as (b) further modified the substituent corresponding to the claimed Ri substituent beyond the modifications described in Michelotti. Final Act. 4; Ans. 3—5. According to the Examiner, one of ordinary skill in the art would have made the changes because Michelloti teaches “that the compounds containing a heterocycle fused to the phenyl ring at R1 are very effective fungicides” and “the necessity of a continuing effort to provide new fungicidal compounds”, and Nakamura teaches that its a,a-disubstituted-a-acylaminoketones are safe and have improved activity. Ans. 4—5. We find that the Examiner has not provided sufficient reason to support the conclusion that one of ordinary skill in the art would have found it obvious to modify the substituents corresponding to the claimed R1 and R4 substituents to arrive at the claimed compound with a reasonable expectation of success. For example, with respect to the R1 substituent, the Examiner posits that the skilled artisan would have modified the R1 substituent disclosed in Michelotti by varying the position of the alkyl on the phenyl ring, adding an oxygen, and varying the position of the heterocycle. Ans. 4, 8. The Examiner’s rationale for making these changes is that Guan teaches that “varying the substituents provides the main source of diversity.” Id. Given the generality of this guidance, we agree with Appellants that the 6 Appeal 2015-002913 Application 11/869,474 Examiner has employed an impermissible “obvious to try” analysis. See In re O'Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988) (explaining that it is not obvious, as here, to: “vary all parameters or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gave either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful” or “explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it.”). Accordingly, we reverse the Examiner’s rejection of claims 1—4 and 20-22 as obvious. SUMMARY For the reasons provided herein, we reverse the Examiner’s rejection of claims 1—4 and 20—22 under 35 U.S.C. § 103(a) as obvious over Michelotti, Nakamura, and Gross. REVERSED 7 Copy with citationCopy as parenthetical citation