UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________
`
`DUK SAN NEOLUX CO., LTD.
`
`Petitioner,
`
`v.
`
`IDEMITSU KOSAN CO., LTD.
`
`Patent Owner
`
`______________
`
`Case IPR2016–00148
`
`U.S. Patent No. 9,056,870
`
`____________
`
`PATENT OWNER IDEMITSU KOSAN CO., LTD.’S
`
`PRELIMINARY RESPONSE UNDER 35 U.S.C. 313 and 37 CFR 42.107
`
`Idemitsu Ex. 2002, pg. 1
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`TABLE OF CONTENTS
`
`I.
`II.
`
`Introduction ...................................................................................................... 1
`References of Duk San’s Grounds 1–3 Are Not Prior Art .............................. 2
`Duk-San’s Priority Attack Is Improper ................................................. 3
`A.
`1.
`Duk San’s Attack Is Not Supported by Evidence ....................... 3
`2.
`Priority Determination Already Made by USPTO ..................... 4
`B. Written Description Requirement of 35 U.S.C. 112 ............................. 5
`C.
`Duk San Relies on Irrelevant Authority to Define the Written
`Description Requirement ....................................................................... 6
`Ariad ............................................................................................ 6
`1.
`Butamax ...................................................................................... 7
`2.
`Chiron ......................................................................................... 9
`3.
`Nichia ........................................................................................ 11
`4.
`Relevant Written Description Authority ............................................. 11
`Ruschig ...................................................................................... 12
`1.
`Driscoll ...................................................................................... 14
`2.
`Fujikawa .................................................................................... 15
`3.
`Application of Relevant Authority to Claims of ‘870 Patent ............. 17
`1.
`Claim 1 ...................................................................................... 17
`2.
`Claims 3, 4, 14–21, and 24 ....................................................... 31
`3.
`Claims 22 and 23....................................................................... 31
`4.
`Claims 25 and 26....................................................................... 33
`III. Duk San Has Not Demonstrated Prima Facie Obviousness in
`Grounds 4–7 ................................................................................................... 36
`Ground 4: Duk San Has Not Demonstrated That Claims 1, 3, 4,
`A.
`and 14–26 Would Have Been Obvious Over Heil in View of
`Vestweber or Ikeda .............................................................................. 36
`1.
`Primary Reference: Heil ........................................................... 36
`Secondary References ............................................................... 41
`2.
`a.
`Alleged Combination of Heil and Vestweber ................ 42
`
`D.
`
`E.
`
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`IDEMITSU KOSAN CO., LTD.
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
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`B.
`
`C.
`
`Alleged Combination of Heil and Ikeda ......................... 47
`b.
`Ground 5: Duk San Has Not Demonstrated That Claims 1, 3, 4,
`and 14–26 Would Have Been Obvious Over Heil in View of
`Kawaguchi ........................................................................................... 51
`1.
`Teachings of Primary Reference Heil ....................................... 51
`Alleged Combination of Heil and Kawaguchi .......................... 51
`2.
`Ground 6: Duk San has not demonstrated that claims 1, 3, 4,
`15, 16, and 22–26 would have been obvious over Kai in view of
`Kawaguchi ........................................................................................... 55
`1.
`Teachings of Primary Reference Kai ........................................ 56
`2.
`Alleged Combination of Kai and Kawaguchi ........................... 56
`Ground 7: Duk San Has Not Demonstrated That Claims 14
`and 17–21 Would Have Been Obvious Over Kai in View of
`Kawaguchi and Heil ............................................................................ 59
`1.
`Teachings of Kai and Kawaguchi ............................................. 59
`Alleged Combination of Kai, Kawaguchi, and Heil ................. 59
`2.
`IV. Conclusion ......................................................................................................... 60
`
`D.
`
`ii
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`Case IPR2016-00148
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`
`TABLE OF AUTHORITIES
`
`CASES
`Anascape, Ltd. v. Nintendo of Am., Inc
`601 F.3d 1333 (Fed. Cir. 2010) ............................................................................. 6
`Ariad Pharm., Inc. v. Eli Lilly & Co.
`598 F.3d 1336 (Fed. Cir. 2010) (en banc) .................................................... 6, 7, 8
`ButamaxTM Advanced Biofuel LLC v. Gevo, Inc.
`IPR2013–00539, Final Written Decision (PTAB 2015) .............................. 7, 8, 9
`Carnegie Mellon Univ. v. Hoffmann–La Roche Inc.
`541 F.3d 1115 (Fed. Cir. 2008) .................................................................. 5, 7, 10
`Chiron Corp. v. Genentech, Inc.
`363 F.3d 1247 (Fed. Cir. 2004) ...................................................................... 9, 10
`Fujikawa v. Wattanasin
`93 F.3d 1559 (Fed. Cir. 1996) ................................................................ 15, 16, 17
`In re Driscoll
`562 F.2d 1245 (CCPA 1977) ........................................................................ 14, 15
`In re Gordon
`733 F.2d 900 (Fed. Cir. 1984) ............................................................................. 54
`In re Johnson
`558 F.2d 1008 (CCPA 1977) ........................................................................ 23, 32
`In re Kahn
`441 F.3d 977 (Fed. Cir. 2006) ............................................................................. 50
`In re Ruschig
`379 F.2d 990 (CCPA 1967) .................................................................... 12, 13, 25
`In re Wertheim
`541 F.2d 257 (CCPA 1976) ................................................................................. 10
`KSR Int’l Co. v. Teleflex Inc.
`550 U.S. 398 (2007) ............................................................................................. 50
`
`
`
`iii
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`Case IPR2016-00148
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`
`LizardTech, Inc. v. Earth Resource Mapping, PTY, Inc.
`424 F.3d 1336 (Fed. Cir. 2005) ........................................................................... 31
`Nichia Corp. v. Emcore Corp.
`IPR2012–00005, Final Written Decision (PTAB 2014) ..................................... 11
`Takeda Chem. Indus. v. Alphapharm Pty., Ltd.,
`492 F.3d 1350 (Fed. Cir. 2007) ........................................................................... 46
`Vas–Cath Inc. v. Mahurkar
`935 F.2d 1555 (Fed. Cir. 1991) ............................................................................. 5
`
`STATUTES
`35 U.S.C. § 112 .......................................................................................................... 5
`35 U.S.C. § 312(a)(3) .............................................................................................3, 4
`35 U.S.C. § 312(a)(3)(B) ........................................................................................... 3
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. § 325(d) ..................................................................................................... 4
`
`RULES
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`
`
`iv
`
`
`
`
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`IDEMITSU KOSAN CO., LTD.
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
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`
`
`PATENT OWNERS EXHIBIT LIST
`
`2001
`
`2002
`
`2003
`
`2004
`
`2005
`
`Specification and Inventor Declaration for US Application Serial No.
`12/253,586
`Moorthy et al., Steric Inhibition of π-Stacking: 1,3,6,8-
`Tetraarylpyrenes as Efficient Blue Emitters in Organic Light Emitting
`Diodes (OLEDs), 9 ORGANIC LETTERS (25) 5215–5218 (2007).
`Park et al., High mobility solution processed 6,13-bis(triisopropyl-
`silylethynyl) pentacene organic thin film transistors, 91 APPLIED
`PHYSICS LETTERS, 063514-01–03 (2007).
`Wolak et al., Photophysical Properties of Dioxolane-Substituted
`Pentacene Derivatives Dispersed in Tris(quinolin-8-
`olato)aluminum(III), 110 J. PHYS. CHEM. B., 7928–37 (2006).
`Shih et al., A Novel Fluorene-Triphenylamine Hybrid That is a Highly
`Efficient Host Material for Blue-, Green-, and Red-Light-Emitting
`Electrophosphorescent Devices, 17 ADVANCED FUNCTIONAL
`MATERIALS, 3514–3520 (2007).
`
`v
`
`
`
`
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`I.
`
`Introduction
`
`IDEMITSU KOSAN CO., LTD.
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
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`Idemitsu Kosan Co., Ltd. (“Idemitsu”) submits its Preliminary Response
`
`under 35 U.S.C. § 313 and 37 C.F.R. § 42.107 to the Petition (“Pet.”) filed by Duk
`
`San Neolux Co., Ltd. (“Duk San”) challenging the patentability of claims 1, 3, 4
`
`and 14–26 of U.S. Patent No. 9,056,870 (“the ‘870 patent”). Duk San’s Petition is
`
`defective and should be denied.
`
`Duk San’s Petition asserts seven alternative grounds of unpatentability. For
`
`convenience Duk San’s grounds are addressed in two groups: Grounds 1–3; and
`
`Grounds 4–7. The first group, Grounds 1–3, relies on references that are not prior
`
`art – to establish unpatentability based on these references Duk San must first
`
`demonstrate that the claims of the ‘870 patent are not entitled to rely on the filing
`
`date of a parent application. Duk San has failed to establish that the claims of the
`
`‘870 patent are not entitled to priority, so Grounds 1–3 must fall.
`
`The second group, Grounds 4–7, rely on combinations of references
`
`published prior to October 17, 2008. Duk San has not established that the claims of
`
`the ‘870 patent would have been obvious in view of the various asserted
`
`combinations of references. Thus, Grounds 4–7 must fall.
`
`Duk San has not demonstrated a reasonable likelihood that it would prevail
`
`in establishing that claims 1, 3, 4 and 14–26 of the ‘870 patent are unpatentable.
`
`1
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`Idemitsu respectfully requests that the PTAB deny all grounds of Duk San’s
`
`IDEMITSU KOSAN CO., LTD.
`Case IPR2016-00148
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`Petition.
`
`II. References of Duk San’s Grounds 1–3 Are Not Prior Art
`
`
`
`The ‘870 patent issued from an application filed June 30, 2011. The ‘870
`
`patent was filed as a continuation of U.S. Application Serial No. 12/253,586 (“the
`
`‘586 application”), which was filed on October 17, 2008.
`
`
`
`Duk San’s Grounds 1 – 3 are based on: (1) WO 2010/107244 A2 (“Kim
`
`2010,” see Pet., pp. 27–32); (2) KR 10–2011–0058246 A (“Park,” see Pet., pp. 33–
`
`36); and (3) KR 10–2011–0066766 A (“Kim 2011,” see Pet., pp. 36–39). The
`
`filing and publication dates of Kim 2010 are after the October 17, 2008 filing date
`
`of the ‘586 application, but before the June 30, 2011 filing date of the ‘870 patent
`
`while the publication dates of Park and Kim 2011 are after the ‘586 filing date. If
`
`the claims of the ‘870 patent are entitled to the ‘586 application filing date of
`
`October 17, 2008 none of Kim, Park and Kim 2011 are prior art.
`
`
`
`In asserting that the ‘870 patent claims are not entitled to the filing date of
`
`the ‘586 application, Duk San relies solely on case law regarding the written
`
`description necessary to support functionally–defined genus claims. Pet., pp. 19–
`
`27. In contrast, the challenged ‘870 patent claims are defined by chemical
`
`structures or well-known chemical terminology. Application of the correct case
`
`2
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`law, i.e., the “blaze mark” cases relating to structurally-defined chemical
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`compounds, leads to the conclusion that the ‘870 patent claims are entitled to the
`
`‘586 application filing date.
`
`A. Duk-San’s Priority Attack Is Improper
`
`Before addressing the particulars of Duk San’s priority attack, Idemitsu
`
`notes two important deficiencies: (1) Duk San did not provide a copy of or
`
`properly cite to the ‘586 application; and (2) the USPTO has already made a
`
`determination that the claims of the ‘870 patent are supported by the disclosure of
`
`the ‘586 application.
`
`1.
`
`Duk San’s Attack Is Not Supported by Evidence
`
`A petition for inter partes review must be accompanied by the evidence
`
`upon which the petitioner relies. Specifically, a petition for inter partes review
`
`may be considered only if “the petition identifies, in writing and with particularity,
`
`… the evidence that supports the grounds for challenge to each claim.” 35 U.S.C. §
`
`312(a)(3). Such evidence includes copies of patents and printed publications that
`
`the petitioner relies upon in support of the petition. Id. § 312(a)(3)(B).
`
`
`
`Duk San’s petition did not include a copy of the ‘586 application, despite
`
`alleging that the claims of the ‘870 patent are not supported by the ‘586
`
`application. Thus, Duk San’s Petition is fatally flawed with respect to Grounds 1 –
`
`3
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`3 since Duk San has failed to submit “evidence that supports the grounds of the
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`IDEMITSU KOSAN CO., LTD.
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`challenge.” Id. § 312(a)(3).
`
`
`
`Further, Duk San’s citations to the ‘586 specification throughout its petition
`
`do not even correlate to the copy of the ‘586 application available in PAIR. See,
`
`e.g., Pet., pp. 24–25, bridging ¶ (citing Ex. 1007 at 95–100, which is silent with
`
`respect to R1 moieties), and p. 25, last ¶ (citing Ex. 1007 at 22:1–100, but p. 22
`
`does not have 100 lines and is silent on the R1 moieties).
`
`As no copy of the ‘586 application was provided, citations to the ‘586
`
`application herein are to the copy of the specification of the ‘586 application
`
`obtained from PAIR and submitted herewith as Exhibit 2001. Citations to the
`
`claims of the ‘870 patent are made with reference to Duk-San’s Exhibit 1001.
`
`2.
`
`Priority Determination Already Made by USPTO
`
`The specifications of the ‘870 patent and the ‘586 application are identical –
`
`this is not a case in which claims are alleged not to be supported by a prior
`
`application having a different (i.e., less robust) disclosure. In allowing the claims
`
`of the ‘870 patent, the USPTO found the claims of the ‘870 patent were supported
`
`by the disclosure of the ‘870 patent – and, thus, the identical disclosure of the ‘586
`
`application. Thus, Duk San’s priority attack is in improper attempt to revisit an
`
`issue already resolved by the USPTO. 35 U.S.C. § 325(d).
`
`4
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`B. Written Description Requirement of 35 U.S.C. 112
`
`Duk San relies solely on a body of case law involving functionally–defined
`
`genus claims – an issue not presented by the challenged claims. Duk San also
`
`incorrectly alleges that not a single compound amongst the 476 compounds
`
`exemplified in the ‘586 application represents the claimed genus of compounds.
`
`
`
`The written description requirement of 35 U.S.C. § 112, provides, in
`
`pertinent part:
`
`The specification shall contain a written description of the invention,
`and of the manner and process of making and using it, in such full,
`clear, concise, and exact terms as to enable any person skilled in the
`art to which it pertains, or with which it is most nearly connected, to
`make and use the same … .
`
`35 U.S.C. § 112, ¶ 1 (2006).
`
`
`
`To satisfy the written description requirement, “the applicant must ‘convey
`
`with reasonable clarity to those skilled in the art that, as of the filing date sought,
`
`he or she was in possession of the invention,’ and demonstrate that by disclosure in
`
`the specification of the patent.” Carnegie Mellon Univ. v. Hoffmann–La Roche
`
`Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas–Cath Inc. v. Mahurkar,
`
`935 F.2d 1555, 1563–64 (Fed. Cir. 1991)). Accordingly, claims added during
`
`prosecution must find support sufficient to satisfy 35 U.S.C. § 112 in the written
`
`5
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`description of the original priority application. See, e.g., Anascape, Ltd. v.
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`Nintendo of Am., Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010). Assessing
`
`“possession as shown in the disclosure” requires “an objective inquiry into the four
`
`corners of the specification.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
`
`1351 (Fed. Cir. 2010) (en banc). Ultimately, “the specification must describe an
`
`invention understandable to [a] skilled artisan and show that the inventor actually
`
`invented the invention claimed.” Id.
`
`C. Duk San Relies on Irrelevant Authority to Define the Written
`Description Requirement
`
`Duk San relies on four cases as defining the written description requirement,
`
`
`
`all of which are limited to situations far afield from the present case.
`
`1.
`
`Ariad
`
`Duk San erroneously asserts that Ariad held that “‘a generic claim may
`
`define the boundaries of a vast genus of chemical compounds, and yet questions
`
`may still remain whether the specification … demonstrates that the applicant has
`
`invented species sufficient to support a claim to a genus’ with such breadth.” Pet.,
`
`p. 20 (citing Ariad, 598 F.3d at 1349). This is an incomplete and inaccurate
`
`characterization of Ariad, which pertained to functionally–defined genus claims
`
`where the Court stated:
`
`6
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`The problem is especially acute with genus claims that use
`functional language to define the boundaries of a claimed genus. In
`such a case, the functional claim may simply claim a desired result,
`and may do so without describing species that achieve that result.
`But the specification must demonstrate that the applicant has made
`a generic invention that achieves the claimed result and do so by
`showing that the applicant has invented species sufficient to support
`a claim to the functionally–defined genus.
`
`Ariad, 598 F.3d 1349 (emphasis added). Ultimately, for functionally–defined
`
`genus claims, the issue is whether the specification demonstrates that the inventor
`
`had possession of species sufficient to support a claim to the totality of the
`
`functionally–defined genus. Carnegie Mellon, 541 F.3d 1115; Ariad, 598 F.3d at
`
`1349–50.
`
`
`
`As none of the challenged claims includes a functionally claimed genus, the
`
`Petitioner’s reliance on Ariad is misplaced.
`
`2.
`
`Butamax
`
`Duk San amplifies its erroneous description of Ariad by relying on
`
`ButamaxTM Advanced Biofuel LLC v. Gevo, Inc., IPR2013–00539, Final Written
`
`Decision (PTAB 2015), which, like Ariad, involved a functionally–defined genus.
`
`
`
`In Butamax, claim 1 was illustrative of the challenged claims and read:
`
`7
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`1. A recombinant yeast microorganism comprising a recombinant
`overexpressed polynucleotide encoding a dihydroxy acid dehydratase
`(DRAD),
`wherein said recombinant yeast microorganism is engineered to
`comprise at least one inactivated monothiol glutaredoxin selected
`from the group consisting of monothiol glutaredoxin–3 (GRX3) and
`monothiol glutaredoxin–4 (GRX4),
`and wherein said inactivated monothiol glutaredoxin results from the
`deletion of one or more nucleotides of an endogenous gene encoding
`said monothiol glutaredoxin, the insertion of one or more nucleotides
`into an endogenous gene encoding said monothiol glutaredoxin, or
`combinations thereof.
`
`Butamax, 3–4 (emphasis added). In assessing the adequacy of the written
`
`description in Butamax, the PTAB construed the functional term “inactivated” to
`
`mean “lacking all activity or functionality,” and this construction was not
`
`challenged by either of the parties. Id. at 8.
`
`
`
`Based on this construction of “inactivated,” the PTAB applied the “specific
`
`requirements for written description of genus claims … that ‘use functional
`
`language to define the[ir] boundaries,’” and determined that the two provisional
`
`applications relied on by the Patent Owner for the benefit of their filing date were
`
`insufficient to satisfy the written description requirement. Id. at p. 13 (quoting
`
`Ariad, 598 F.3d at 1349–50). The PTAB found that although the claims satisfied
`
`8
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`the written description requirement when there was a complete deletion of the
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`GRX3 and/or GRX4 genes, because complete deletion would make the protein
`
`completely inactive, but the claims did not satisfy the written description
`
`requirement for partial deletions of a gene since there was no showing that partial
`
`deletions would achieve the functionally claimed result of complete inactivity. Id.
`
`at 17–19. The PTAB found that the provisional applications did not provide any
`
`description of the type, location, or size of a deletion in “… an endogenous GRX3
`
`and/or GRX4 gene that would result in an inactive protein” other than the complete
`
`deletion of the entire gene. Id. at 18–19. Importantly, the construction of “inactive”
`
`excluded partial deletions of the GRX3 and GRX4 genes that would have
`
`accomplished “less than complete inactivation.” Id. at 16.
`
`
`
`As none of the challenged claims includes a functionally claimed genus,
`
`Butamax does not apply.
`
`3.
`
`Chiron
`
`Duk San also relies on Chiron Corp. v. Genentech, Inc., 363 F.3d 1247,
`
`1255 (Fed. Cir. 2004), which involved the state of relevant knowledge in the art
`
`when determining whether claims directed to a genus of antibodies satisfied the
`
`written description requirement. Chiron’s patent–in–suit claimed a monoclonal
`
`antibody that would bind to a human breast cancer antigen. Id. at 1249.
`
`9
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`Chiron sued Genentech over sales of a humanized antibody for the treatment
`
`
`
`
`of breast cancer. Id. at 1252. Before trial, Chiron sought and obtained a broad
`
`construction of the asserted patent claims such that they encompassed murine
`
`antibodies, which were originally disclosed, as well as chimeric and humanized
`
`antibodies. Id. Applying this construction, the Court considered whether Chiron’s
`
`priority applications filed in February 1984, January 1985, and May 1986 provided
`
`written description for the asserted patent claims. Id. In making its determination,
`
`the Court noted that “the function of the description requirement is to ensure that
`
`the inventor had possession, as of the filing date of the application relied on, of the
`
`specific subject matter later claimed by him.” Id. at 1255 (quoting In re Wertheim,
`
`541 F.2d 257, 262 (CCPA 1976)).
`
`
`
`The Court found that because the first disclosure of the chimeric antibodies
`
`did not occur until four months after the filing of Chiron’s 1984 application, the
`
`Chiron scientists could not have had possession of, and disclosed, the subject
`
`matter of chimeric antibodies that were not known to exist at the time of the 1984
`
`application. Chiron, 363 F.3d 1255.
`
`
`
`Unlike in Chiron, the claims challenged by Duk San do not recite subject
`
`matter that was unknown and non–existent at the time of filing. Thus, the facts of
`
`Chiron are clearly distinguishable.
`
`10
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`4.
`
`Nichia
`
`Finally, Duk San relies on Nichia Corp. v. Emcore Corp., IPR2012–00005,
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`Final Written Decision (PTAB 2014), where the Patent Owner, Emcore, filed a
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`motion to amend claims. Nichia, 49. In assessing Emcore’s motion to amend, the
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`PTAB found that Emcore failed to, inter alia, provide written description support
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`for each proposed substitute claim. Id. at 49–56. The PTAB found that Emcore’s
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`citation: “Proposed claim 21; See, e.g. existing claims 6, 14, and 15,” was so vague
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`as to be inadequate to determine whether there was the written description support
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`for Emcore’s proposed substitute claims. Id. at 54–55. The PTAB concluded that
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`the burden should not be placed on the PTAB to sort through Patent Owner’s
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`patent and the original disclosure of the application to determine whether each
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`proposed substitute claim was supported in the original disclosure. Id.
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`The issue here is not whether support for the claims was adequately
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`explained, but whether such support exists. Nichia, which dealt with the
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`sufficiency of a motion to amend in an Inter Partes Review, is irrelevant to the
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`current issue.
`
`D.
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`Relevant Written Description Authority
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`Duk San ignored the cases bearing on whether the claims of the ‘870 patent
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`are supported by the disclosure of the ‘586 application.
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`IDEMITSU KOSAN CO., LTD.
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
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`1.
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`Ruschig
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`Duk-San ignored the seminal case on point, In re Ruschig, 379 F.2d 990
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`(CCPA 1967).
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`
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`In Ruschig, the specification disclosed benzene sulphonyl–ureas compounds
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`of the following formula:
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`,
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`where R represents hydrogen, chlorine, bromine, further alkyl and alkoxy groups
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`having at most 6 carbon atoms, especially the methyl and methoxy groups, R1
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`represents chlorine and bromine, and R2 represents alkyl–, alkenyl–, cycloalkyl–,
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`or cycloalkylalkyl radicals containing 2 to 7 or 8 carbon atoms and non–toxic basic
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`salts thereof. U.S. Patent No. 3,198,706 (the Ruschig patent), 1:37–50.
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`The Court found that the genus described in the Ruschig specification
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`encompassed about “half a million possible compounds,” whereas the claim at
`
`issue was directed to a single compound – chlorpropamide:
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`which was not specifically disclosed. Id. at 993. Notably, the claim of Ruschig was
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`not specifically disclosed because it was copied from another application for
`
`,
`
`12
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`IDEMITSU KOSAN CO., LTD.
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
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`purposes of provoking an interference. Id. at 991–992. Nevertheless, Ruschig
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`argued “that one skilled in the art would find certain ‘guides’ in the specification
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`which would lead him to the compound … and that the compound is therefore
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`disclosed.” Id. at 993.
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`The Court was not persuaded that Ruschig guided one to the claimed specie
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`stating that:
`
`The important words in the quotation [from the specification] from
`our point of view are “etc.” and “possible”. It is an old custom in the
`woods to mark trails by making blaze marks on the trees. It is no
`help in finding a trail or in finding one's way through the woods where
`the trails have disappeared – or have not yet been made, which is
`more like the case here – to be confronted simply by a large number
`of unmarked trees. Appellants are pointing to trees. We are looking
`for blaze marks which single out particular trees. We see none.
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`Id. at 994–995 (emphasis added).
`
`
`
` Ruschig makes clear, one cannot disclose a forest in the original application,
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`and then later pick an individual tree out of the forest and say “here is my
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`invention.” Id. Ruschig did not address a situation where the application disclosed
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`a genus and the claim was to a sub-genus (as opposed to a single compound) as in
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`the present case.
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`13
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`2.
`
`Driscoll
`
`IDEMITSU KOSAN CO., LTD.
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
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`Subsequent to Ruschig, the CCPA found adequate blaze marks in the
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`disclosure of In re Driscoll to guide one skilled in the art to the claimed invention.
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`In re Driscoll, 562 F.2d 1245 (CCPA 1977). In Driscoll, the claim at issue recited
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`a compound of the following formula:
`
`
`The invention in Driscoll was a chemical compound with three variables, R,
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`
`
`R1, and R2. The claim language recited that R1 and R2 each were to be chosen from
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`only one of the fourteen possible categories of substituents disclosed in the priority
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`document. The examiner rejected the claim, stating that the written description
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`requirement was not satisfied in the absence of a guide to direct a person to the
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`specific claimed genus of the priority document, and the inventor appealed the
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`rejection. See id. at 1248. On appeal, the CCPA reversed on the grounds that Ex
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`Parte Markush,1925 C.D. 126 (Comm'r Pat. 1925), sanctioned the practice of
`
`listing many possible alternative structures usable for an invention and then
`
`claiming just one of the possible structures as the invention. Driscoll, 562 F.2d at
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`1249. The court distinguished Ruschig:
`
`14
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`IDEMITSU KOSAN CO., LTD.
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
`
`… because the structural formula there relied on could have
`described, at best, only a subgenus including the specific compound
`claimed, and not the compound itself. In this respect, Ruschig is
`readily distinguishable from the present case where the exact
`subgenus claimed is clearly discernible in the generalized formula of
`the thiadiazole urea set forth in the earlier filed application.
`
`Id. at 1250. The facts here are very similar to those of Driscoll.
`
`
`
`3.
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`Fujikawa
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`The Federal Circuit followed the blaze mark analysis in Fujikawa v.
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`Wattanasin, 93 F.3d 1559 (Fed. Cir. 1996). Fujikawa involved an appeal from an
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`interference wherein the PTO denied Fujikawa’s motion to add a count to a
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`subgenus of compounds falling within the following generic structure and formula:
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`wherein each of R and R0 is, independently, C1–6 alkyl (primary, secondary, or
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`tertiary), C3–7 cycloalkyl, or the following ring:
`
`
`
`
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`15
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`and each of R1, R2, R3, R4, and R5 is, independently, hydrogen, C1–4 alkyl, C1–4
`
`IDEMITSU KOSAN CO., LTD.
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
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`alkoxy, trifluoromethyl, fluoro, chloro, phenoxy, benzyloxy, or hydroxy. Id. at
`
`1570.
`
`
`
`The proposed subgenus was directed to compounds wherein R is
`
`cyclopropyl and R0 is 4–fluorophenyl. Id. The PTO denied the motion to add the
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`count on the grounds that Wattanasin’s application did not adequately describe the
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`subgenus since Wattanasin preferred methyl and isopropyl for R, rather than
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`cyclopropyl as in the proposed count. Id.
`
`
`
`The Federal Circuit affirmed the PTO, citing Ruschig:
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`As the Board pointed out, Fujikawa’s proposed sub–genus diverges
`from Wattanasin’s preferred elements at least with respect to
`position R. Although, in hindsight, the substitution of cyclopropyl for
`isopropyl might seem simple and foreseeable Wattanasin’s disclosure
`provides no indication that position R would be a better candidate for
`substitution than any other…. Were we to extend Ruschig’s metaphor
`to this case, we would say it is easy to bypass a tree in the forest,
`even one that lies close to the trail, unless the point at which one
`must leave the trail to find the tree is well marked. Wattanasin’s
`preferred embodiments do blaze a trail through the forest; one that
`runs close by Fujikawa’s proposed tree. His application, however,
`does not direct one to the proposed tree in particular, and does not
`teach the point at which one should leave the trail to find it.
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`Id. (emphasis added).
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`IDEMITSU KOSAN CO., LTD.
`Case IPR2016-00148
`U.S. Patent No. 9,056,870
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`
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`The ‘586 application has the required “blaze marks” as explained below.
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`E. Application of