Japan Tobacco Inc.

Patent Trials and Appeals Board

Mar 16, 2021

2020004647 (P.T.A.B. Mar. 16, 2021)

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.
14/749,966 06/25/2015 Ikuo Mitani 14539-0038003 6145
26211 7590 03/16/2021
FISH & RICHARDSON P.C. (NY)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
CORNET, JEAN P
ART UNIT PAPER NUMBER
1628
NOTIFICATION DATE DELIVERY MODE
03/16/2021 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte IKUO MITANI, YOSUKE OGOSHI,
TAKUYA MATSUI, MASAHIRO YOKOTA, MASAKAZU TERASHITA,
DAI MOTODA, KAZUHITO UEYAMA, HIROYUKI ABE,
TAKAHIRO HOTTA, and TAKASHI ITO
__________

Appeal 2020-004647
Application 14/749,966
Technology Center 1600
__________

Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 6–9, 14, and 26. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Japan Tobacco Inc. as the real party in
interest. Appeal Br. 1.
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Application 14/749,966

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STATEMENT OF THE CASE
The sole rejection before us for review is the Examiner’s rejection of
claims 1, 6–9, 14, and 26 on the ground of nonstatutory obviousness-type
double patenting as being unpatentable over claims 1–30 of U.S. Patent No.
8,283,465 B2.2 Ans. 3–6 (entered Apr. 2, 2020).
Appellant’s claim 1 is representative and reads as follows:
1. A compound represented by the following formula [I], or
a pharmaceutically acceptable salt thereof, or a solvate thereof:

wherein
the partial structural formula:

is a group represented by:

2Ikuo Mitani et al., US 8,283,465 B2 (issued Oct. 9, 2012) (“the ’465
patent”).
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R1 is
(1) a hydrogen atom,
(2) a C1-6 alkyl group,
(3) a C6-14 aryl group,
(4) a C3-8 cycloalkyl group,
(5) a C6-14 aryl-C1-6 alkyl group, or
(6) a C3-8 cycloalkyl-C1-6 alkyl group;
R2 is
(1) a hydrogen atom,
(2) a C1-10 alkyl group,
(3) a C6-14 aryl group optionally substituted by the same or
different 1 to 5 substituents selected from the following group
B,
(4) a C3-8 cycloalkyl group optionally substituted by the same or
different 1 to 5 substituents selected from the following group
B,
(5) a C3-8 cycloalkenyl group optionally substituted by the same
or different 1 to 5 substituents selected from the following
group B,
(6) a heteroaryl group optionally substituted by the same or
different 1 to 5 substituents selected from the following group
B (wherein the heteroaryl has, besides carbon atom, 1 to 6
hetero atoms selected from nitrogen atom, oxygen atom and
sulfur atom),
(7) a C6-14 aryl-C1-6 alkyl group (wherein C6-14 aryl is optionally
substituted by the same or different 1 to 5 substituents selected
from the following group B), or
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(8) a C3-8 cycloalkyl-C1-6 alkyl group (wherein C3-8 cycloalkyl is
optionally substituted by the same or different 1 to 5
substituents selected from the following group B);
R3 is
(1) a hydrogen atom,
(2) a halogen atom,
(3) a C1-6 alkyl group,
(4) a C6-14 aryl group,
(5) a C3-8 cycloalkyl group, or
(6) a C6-14 aryl-C1-6 alkyl group; and
R4 and R5 are each independently
(1) a hydrogen atom, or
(2) a C1-6 alkyl group,
group B:
(a) a halogen atom,
(b) a C1-6 alkyl group,
(c) a C3-8 cycloalkyl group,
(d) a cyano group, and
(e) a halo-C1-6 alkyl group.
Appeal Br. 10–12.
DISCUSSION
The Examiner’s Rejection
The Examiner initially determined that the compounds recited in
rejected claims 1, 6–9, 14, and 26 are unpatentable over claims 1–30 of the
’465 patent “because both the compounds of the U.S. Patent claims
anticipate the compounds of the instant claims.” Ans. 4.
The Examiner determined further that, “in the absence of showing
unobvious results, it is obvious to one of ordinary skill in the art at the time
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of the invention when faced with the US patent claims to make the instantly
claimed derivatives of a known product.” Ans. 5.
In particular, the Examiner reasoned, the compounds recited in
rejected claims 1, 6–9, 14, and 26, and the compounds recited in the ’465
patent, “are common derivatives known as isomers. Compounds which are
position isomers (compounds having the same radicals in physically
different positions on the same nucleus) are generally of sufficiently close
structural similarity that there is a presumed expectation that such
compounds possess similar properties.” Ans. 5 (citing In re Wilder, 563
F.2d 457 (CCPA 1977); MPEP § 2144.09(11)).
The Examiner determined that, “[g]uided by the teaching of [the] US
patent claims, one skilled in the art would be able to make similar
compounds by making isomers of the known compound. The motivation
would be to prepare similar compounds that are pharmacologically active
compounds that have the same utility.” Ans. 6.
The Examiner explained that the rejection for obviousness-type
double patenting is “based on the close structural similarity of the instantly
claimed compounds to the [patented] compounds and the common utility
shared among the compounds.” Ans. 6. The Examiner determined that
“[t]here is an expectation among those of ordinary skill in the art that similar
structural compounds will have similar properties and that modification of a
known structure is mere experimentation within the means of a skilled
artisan.” Id.
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Analysis
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (holding that requiring an applicant to
identify “reversible error” in an examiner’s rejection is consistent with long
standing Board practice).
In the present case, having carefully considered all of the evidence
and argument presented by Appellant and the Examiner, we are not
persuaded that Appellant has shown that the Examiner made reversible error
in maintaining the rejection for obviousness-type double patenting.
Appellant does not assert that the Examiner erred in determining that
the compounds recited in rejected claims 1, 6–9, 14, and 26 would have been
obvious in view of the compounds recited in claims 1–30 of the ’465 patent.
Rather, Appellant contends that, during prosecution of the ’465 patent, the
Examiner issued a rejection asserting an improper Markush group between
the following four alternative structures:

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which the Examiner now asserts are obvious over each other in the double
patenting rejection that is the subject of this appeal. Appeal Br. 2–3; Reply
Br. 2–3.
Appellant contends that a rejection for an improper Markush group is
tantamount to a restriction requirement, because a rejection for an improper
Markush group finds its basis in lack of unity of invention. Appeal Br. 3–6
(citing In re Harnisch, 631 F.2d 716 (CCPA 1980)).
Appellant contends that because an improper Markush group rejection
must be treated as a restriction requirement, the present application is
properly considered a divisional application of the application that issued as
the ’465 patent, and the obviousness-type double patenting rejection is
improper:
Since the de facto restriction requirement placed each of the
four alternative bicyclic structures into different groups, and
required applicant to select only one group for prosecution in
the application that gave rise to the ’465 patent, the present
claims must be treated as being directed to a different restriction
group than what was claimed in the ’465 patent and afforded
the protection provided by 35 U.S.C. 121. It would be
fundamentally unfair for the Office to be able to first prevent
applicant from pursuing the present claims in the application
that gave rise to the ’465 patent (in the guise of an Improper
Markush Group rejection rather than a formal restriction
requirement) but then in the present application be permitted to
reject the claims as patentably indistinct from the claims of the
prior application. Accordingly, the present application is a
divisional of the ’465 patent and the ’465 patent therefore
cannot be used in a nonstatutory double patenting rejection of
the claims.
Appeal Br. 9.
Appellant’s arguments do not persuade us of reversible error by the
Examiner.
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As Appellant argues, 35 U.S.C. § 1213 provides a safe harbor from
obviousness-type double patenting rejections when a restriction requirement
results in the filing of a divisional application:
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.
Our reviewing court, however,
applies a strict test for application of § 121. Specifically, § 121
only applies to a restriction requirement that is documented by
the PTO in enough clarity and detail to show consonance. The
restriction documentation must identify the scope of the distinct
inventions that the PTO has restricted, and must do so with
sufficient clarity to show that a particular claim falls within the
scope of the distinct inventions. In other words, § 121 requires
a record that shows a discernable consonance.
Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1382 (Fed.
Cir. 2003) (emphasis added).
In the present case, Appellant does not identify any documented
restriction requirement between the subject matter recited in rejected claims
1, 6–9, 14, and 26, and the subject matter recited in claims 1–30 of the ’465
patent, in the record of this application or any of the applications in the chain

3 This application claims priority to applications filed before September 16,
2012. See Spec. 1 (amendment entered February 8, 2016). The pre-AIA
(America Invents Act) version of the statute therefore governs this
application.
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of priority of this application. Appellant, moreover, does not identify any
authority allowing this Board to substitute a purported improper Markush
group rejection for a documented restriction requirement, so as to allow
Appellant to avail itself of the safe harbor in § 121.
In particular, while we acknowledge Appellant’s arguments regarding
the unity of invention principles discussed in Harnisch, Appellant points to
nothing in Harnisch or any other authority suggesting that the safe harbor of
§ 121 may be invoked by an improper Markush group rejection, rather than
the restriction requirement expressly required by the statute. Accordingly,
given our reviewing court’s mandate for strict application of § 121, see
Geneva Pharms. v. GlaxoSmithKline supra, and given the absence of a
documented restriction requirement between the subject matter recited in
rejected claims 1, 6–9, 14, and 26, and the subject matter of claims 1–30 of
the ’465 patent, we conclude that we must affirm the Examiner’s
obviousness-type double patenting rejection.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 6–9, 14,
26
Obviousness-type
Double Patenting
1, 6–9, 14,
26

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED