Ex parte Brusilow

May 18, 2011 – Blog Post

In Ex parte Brusilow (Appeal 2011-001751 in U.S. Application No. 10/758,415) the Board of Patent Appeals and Interferences (BPAI) reversed the Examiner’s finding of obviousness because the references relied upon “taught away” from their combination.

The claim at issue was:  A method for treating a polyglutamine disease, comprising administering a compound selected from the group consisting of L-methionine S-sulfoximine, Lethionine S- sulfoximine, glufosinate and branched chain  α-keto acids derived from leucine, isoleucine or valine, to a patient in need of such treatment.

The Examiner relied on the combined disclosure of four references to reject the claims as obvious.  Of the four references, one disclosed methionine sulfoximine (MSO) as a centrally acting neurotoxin with convulsive properties which suppressed the formation of glutamine, a second disclosed that reducing glutamine levels would be a crucial advantage for the therapy and prophylaxis of the pathological states associated with Huntington’s Disease (a polyglutamine disease), and a third reference disclosed pharmaceutical doses of MSO.  However, two of the references disclosed that administration of MSO to animals resulted in convulsions, seizure, myopathy, decreased body temperature, and even reduced brain metabolism.

The Board found that:

“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).

Therefore,the Board held that even though there were disclosures that MSO reduced glutamine levels, and a reduction in glutamine levels would be beneficial to treat a polyglutamine disease (Huntington’s Disease), the fact that two of the three references relied on the rejections taught only negative therapeutic effects resulting from administration of MSO this means that one of skill in the art would not have sought to use MSO as a therapeutic, i.e., a teaching away.  It is not uncommon for PTO Examiner’s to focus on only portions of the disclosure that support their rejection rather than looking at the entirety of the reference(s) being applied even though the MPEP in section 2141.02 part IV provides that guidance to Examiners.  If you can find a teaching away in the references cited or in other publications in the relevant field, it can serve to be quite successful in the post-KSR world of obviousness.