Ex Parte Tice et al

Patent Trial and Appeal Board

May 31, 2017

11869474 (P.T.A.B. May. 31, 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.
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”).
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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:
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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.
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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
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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
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