Paper No. 6 Filed: October 12, 2021 Introduction The Board should deny institution under 35 U.S.C. § 325(d) because the Petition recycles the same prior art and arguments considered by the Examiner during prosecution of the ’927 patent.
Paper No. 6 Filed: October 12, 2021 (“Compounds that bind to neuronal nicotinic receptor sites, including [varenicline], and its hydrochloride salt, are referred to in WO 99/35131 [i.e., Coe], published Jul.
Despite Petitioner’s assertions to the contrary, a plain reading of the prosecution history leaves no doubt that the Examiner evaluated the precise arguments that Petitioner Paper No. 6 Filed: October 12, 2021 now raises.
As discussed above, this type of broad overview does not “add significantly to the information considered by the Examiner during prosecution,” Canon Inc., IPR2016-01202, Paper 15 at 13, and does not shift factor (c) in favor of institution.
Nor does Pfizer demonstrate the Examiner erred in allowing the challenged claims here, as there is no evidence (either in the file history or cited in the Petition) that would have led a POSA to the tartrate salt of varenicline.