DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission of RCE on 9/22/25 and the amendment of claims has been entered.
Election/Restrictions
Applicant’s election without traverse of a cannabinoid without a linker, the ratio of 1: <25, CBND as the cannabinoid in the reply was previously acknowledged.
Claims 13-16 and 19-21 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Please note that claims 4-6, 9-10 and 13-21 require a “linker” and were therefore withdrawn from consideration.
In the reply filed 2/26/24, Applicants amended claims 1, 3, 8 and 12 were amended.
In the reply filed 11/13/24, Applicants amended claims 1, 8, 11 and added NEW claim 22.
In the reply filed 9/22/25, Applicants amended claims 1, 7-8, 11, 22 and added NEW claims 23-26.
Claims 1, 3, 7-8, 11-16, 19-26 are pending.
Claim 1, 3, 7, 8, 11, 12 and 22-26 read on the elected species and are under consideration.
Claim Objections-Withdrawn
The objection to claim 7 is withdrawn due to amendment of the claims.
.
Claim Rejections - Withdrawn
The rejection of claim 8 and 11 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement (New Matter) is withdrawn due to amendment of the claim.
The rejection of claims 1, 7-8, 11-12 and 22 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn due to amendment of the claims.
The rejection of claim 22 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends is withdrawn due to amendment of the claim.
Claim Objections
Claims 3, 7-8, 11-12 and 22-26 are objected to because of the following informalities: “The composition of claim…” should be amended to “The cannabinoid composition of claim…” .
Claim 22 is objected to because of the following informalities: “to free amino acid residue” should be amended to “one or more free amino acid residues”
Appropriate correction is required.
Claim Rejections - 35 USC § 112-Maintained
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The rejection of claim 22 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is maintained.
Claim 22 is indefinite because the ratio is unclear. The limitation “between 1:1 and 1-50 (mg:g) is unclear because “1-50” is not a ratio. A ratio is a comparison of two quantities using a colon (:), not a dash.
Response to Arguments
Applicant's arguments filed 9/22/25, have been fully considered but are not persuasive with respect to the issues of claim 22. The Applicants do not argue or correct the issues with respect to the unclear ratio above. The rejection is maintained.
NEW REJECTIONS
Claim Rejections - 35 USC § 112, first paragraph
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—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, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1, 3, 7, 8, 11, 12 and 22-26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. These claims are drawn to a cannabinoid composition comprising a cannabinoid bound to one or more free amino acid residues to form a cannabinoid complex.
Lack of Ipsis Verbis Support
The specification is void of any literal support for the “free amino acid”. the limitation "free amino acid" is not present anywhere in the specification.
Lack of Implicit or Inherent Support
“While there is not in haec verba requirement, newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure.” See MPEP 2163. Thus support can be furnished implicitly or inherently for a specifically claimed limitation. However, the specification lacks any implicit or inherent support for the claimed “free amino acid”. The specification merely lists amino acids but does not describe then as free amino acids or distinguish them from amino acids that are bound, conjugated or modified. The specification lacks implicit or inherent support for a composition comprising a CBDN with a free amino acid and further comprising a whey protein isolate, egg protein isolate, oat protein isolate, hemp protein and or brown rice protein isolate. The specification lacks implicit or inherent support for a composition comprising a CBDN with a free amino acid and further comprising a dipeptide, a tripeptide, an oligopeptide, a polypeptide a protein and or protein fragment.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1, 3, 7, 8, 11, 12 and 22-26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
MPEP § 2163 states that the written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice, or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. A “representative number of species” means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.
Scope of the claimed genus
Claim 1 is drawn to a cannabinoid composition comprising a cannabinoid bound to one or more free amino acid residues to forma a cannabinoid complex. The instant specification does not clearly define “complex” but states that the CBDN is linked covalently to an amino acid and other embodiments, the CBDN is linked by a hydrogen bond, electrostatic forces, linked by lipophilic interactions (van der Waals forces) to form the complex [PGPUB0028]. The instant specification defines CBDN [PGPUB0016]:
As used herein the term “CBND” denotes a structural class of mainly natural, but also synthetic or semisynthetic, organic chemicals characterized by the presence of terpenophenolic structures. The number and characteristics of these terpenophenolic structures underlie the unique physical, chemical, and biological properties (e.g., metabolic, toxic, therapeutic, etc.). Examples include (but not limited to), CBD (cannabidiol), CBDA (cannabidiolic acid), CBN (cannabinol), CBG (cannabigerol), CBC (cannabichromene), CBL (cannabicyclol), CBV (cannabivarin), THCV (tetrahydrocannabivarin), CBDV (cannabidivarin), CBCV (cannabichromevarin), CBGV (cannabigerovarin), CBGM (cannabigerol monomethyl ether), CBE (cannabielsoin), CBT (cannabicitran) and THC (tetrahydrocannabinol). The general physical properties include water-insoluble, moderately water-insoluble and moderately water-soluble compounds with molecular weight of 500-4000 Da, >12 terpenophenolic hydroxyl groups, and 1-2 aromatic rings per 1000 Da (these are general ranges and may be ±20% and be within the definition of CBND.
The USPTO provides claim terms with broadest reasonable interpretation in light of the specification.
Assessment of whether species are support in the original specification
There were no embodiments of the invention of reduced to practice at the time of filing. There were no embodiments of any CBDN complexed with a free amino acid. There were no embodiments comprising a CBDN with a free amino acid and further comprising a whey protein isolate, egg protein isolate, oat protein isolate, hemp protein and or brown rice protein isolate. There were not embodiments comprising a CBDN with a free amino acid and further comprising a dipeptide, a tripeptide, an oligopeptide, a polypeptide a protein and or protein fragment.
Applicants disclosed a curcumin cannabidiol whey powder protein isolate complex, a glucosamine cannabidiol conjugate and a glucosamine sulfate, curcumin, cannabidiol conjugate (Examples 1-5).
In summary, for these reasons, the skilled artisan would reasonably conclude that the inventor(s), at the time the application was filed, had possession of cannabidiol complexed with curcumin, glucosamine sulfate and whey protein isolate at the time the invention was filed.
Assessment of whether disclosed species are representative of the claimed genus
MPEP § 2163 states that a “representative number of species” means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.
In the instant case, the disclosure of cannabidiol complexed with curcumin, glucosamine sulfate and whey protein isolate is not representative of the genus.
Glucosamine sulfate, whey protein isolate and curcumin are not “free amino acids”. The instant specification does not disclose a single complex of any CBDN and a free amino acid.
The instant specification only discloses cannabinidiol as the species of CBDN. There were no other cannabinoids disclosed.
A single species of CBDN is not representative of the all cannabinoids. Whey protein isolate, glucosamine sulfate and curcumin are not representative of “free amino acid” because they are not free amino acids.
Identifying characteristics and structure/function correlation
In the absence of a reduction to practice of a representative number of species, the written description requirement for a claimed genus may be satisfied by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus. To meet this requirement in the instant case, the specification must describe the structural, physical and/or chemical properties of the CBDN and free amino acid that form a complex.
The specification discloses generic mixing of the CBDN and proteins and does not disclose complexes of CBDN and free amino acids.
The specification discloses only mixtures of CBDNs with whey protein isolate, glucosamine sulfate and curcumin, none of which are “free amino acids”. The specification does not disclose any species within the claimed genus of CBDN complexes comprising cannabinoids bound to free amino acids.
In conclusion, for the reasons presented above, the skilled artisan would reasonably conclude that the inventors, at the time the application was filed had full possession of the neuropeptide analogs, SEQ ID NO: 5-19. Therefore, only SEQ ID NO: 5-19 satisfy the written description requirements of 35 U.S.C. 112, first paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1, 3, 7, 8, 11, 12 and 22-26 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is indefinite because the limitation “free amino acid”. “Free amino acid” is not defined in the specification and the scope of the term is unclear. The term “free amino acid” can be interpreted as (1) an unmodified amino acid (i.e. has a free N and C terminus) (2) an amino acid that is not incorporated into a peptide or protein but may include modified amino acids and (3) an amino acid that is not covalently bound to another molecule. The scope is further unclear because dependent claim 25 recites the free amino acid is N-Acetyl-cysteine. N-Acetyl-cysteine is an acetylated amino acid derivative and therefore would not be considered a free amino acid under certain interpretations of the claims, such as an unmodified amino acid. Therefore, because the term “free amino acid” is not defined in the specification and subject to multiple reasonable interpretations, the metes and bounds of the claims is unclear. For reasons of examination, “free amino acid” is interpreted to include amino acids that are not incorporated into a peptide or protein but can include modified amino acids.
Claim 3 is indefinite for depending from canceled claim 2. Please note that claim 2 was a withdrawn claim. It is unclear if claim 3 was to be canceled or amended to depend from claim 1.
Claim 1, 3, 7, 8, 11, 12 and 22-26 are rejected for depending from claim 1.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 7, 12, 24 and 26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Elsohly et al. (USPN 8,809,261, 8/19/2014).
Elsohly et al. teach the poor gastro-intestinal stability and metabolism of THC hinders absorption (col. 2, 1st and 2nd para). Elsohly et al. teach THC conjugated to amino acid esters to overcome these issues (Table 1):
TABLE 1
Computed physicochemical properties of select amino acid ester prodrugs
of THC. Molecular modeling Pro Software was used for this purpose.
Molecular
Molecular
% hydrophilic
Polar surface
Sr. No.
Compound
weight
formula
mLogP
surface area
area
1
THC
314.46
C21H30O2
3.963
5.742
29.46
2
THC-Ala
385.54
C24H35NO3
2.438
13.163
64.71
3
THC-Leu
427.61
C27H41NO3
3.051
11.465
64.71
4
THC-Val
413.59
C26H39NO3
2.850
11.889
64.71
5
THC-Gly
371.25
C23H33NO3
2.227
16.702
64.71
6
THC-Ser
401.54
C24H35NO4
3.183
22.742
84.94
7
THC-Sar
385.26
C24H35NO3
2.438
21.070
50.72
8
THC-Asp
429.55
C25H35NO5
3.286
21.844
105.17
9
THC-Tyr
477.63
C30H39NO4
2.683
16.064
84.94
10
THC-Tyr-Gln
605.8
C35H47N3O6
4.27
28.687
163.45
11
THC-Tyr-(Gln)2
733.9
C40H55N5O8
3.32
35.529
244.95
12
THC-Gln
442.28
C26H38N2O4
2.36
22.833
110.96
13
THC-Gln-Val
541.35
C31H47N3O5
4.95
25.434
143.22
14
THC-Gln-Val-Val
640.42
C36H56N4O6
5.98
27.886
175.48
15
THC-Val-Gly
470.64
C28H42N2O4
4.296
20.319
96.97
16
THC-Val-Gly-Gly
527.70
C30H45N3O5
5.782
27.276
129.23
THC meets the limitation of cannabinoid in claim 1 and Phyto cannabinoid in claim 7. With respect to “free amino acid”, as indicated above, the broadest reasonable interpretation of “free amino acid” includes amino acids that are not incorporated into a peptide or protein but can include modified amino acids. Therefore, the amino acid esters conjugated to THC would meet the limitation of “free amino acid”.
With respect to claim 12, the cannabinoid is conjugated via a hydrogen bond (scheme 1).
With respect to claim 24, the ratio of cannabinoid to amino acid is 1:1. Please note that the claim does not require a w/w (mg:g) ratio.
With respect to claim 26, Table 1 discloses the amino acids alanine, leucine, valine, glycine and proline.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 7, 12 and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Elsohly et al. (USPN 8,809,261, 8/19/2014) in view of Pang et al. (J. Control Release. 2013 Dec 15;175:48-53).
The teachings of Elsohly et al. are presented above in detail. The reference does not teach the free amino acid is a cysteine. However, the teachings of Pang et al. cure this deficiency.
Pang et al. teach that iRGD has a very short half-life. Pang et al. teach that the addition of a cysteine residue prolongs of the half-life of iRGD (Abstract).
With respect to claim 25, it would have been obvious to a person of ordinary skill in the art use a cysteine residue in the THC conjugates of Elsohly et al. because Pang et al. teach that cysteine residues improved the half-life of the compound. There is a reasonable expectation of success given that Elsohly et al. teach THC amino acid conjugates and method of making them.
Claim 1, 3, 7, 12, 22-24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Elsohly et al. (USPN 8,809,261, 8/19/2014) in view of Patel et al. (WO2017180594).
The teachings of Elsohly et al. are presented above in detail. The reference does not teach the ratio of cannabinoid to one or more free amino acid is about 1:25 (mg:g). However, the teachings of Patel et al. cure this deficiency.
Patel et al. teach stabilized pharmaceutical compositions comprising an active ingredient and amino acids such as arginine, alanine, glycine, lysine or proline (Abstract). Patel et al. teach the amino acids from about 1% to about 6% [0014] and about 10mg/ml to about 200 mg/ml of a protein biomolecule (active ingredient) [0016]. Therefore, Patel et al. demonstrates that the relative amounts of active ingredient and amino acid in a pharmaceutical are variables that may be adjusted.
It would have been obvious to a person of ordinary skill in the art to adjust the relative amounts of the cannabinoid and amino acid in the composition of Elsohly et al. including selecting a ratio of cannabinoid to amino acid of 1:25 (w/w) because the relative concentration of an active agent and amino acid is a result-effective variable and the determination of the optimum or workable ranges of said variable maybe characterized by routine experimentation (Please see MPEP 2144 II-Optimization of Ranges). The relative amounts of the active agent and amino acid affect variables such as stability, solubility and delivery and therefore constitute a result driven variable. There is a reasonable expectation of success given that adjusting concentrations of formulation components is a routine task in pharmaceutical formulation development. Furthermore, MPEP 2144 states: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. The Applicants have not show the range is critical.
Conclusion
No claims are allowed.
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/TARA L MARTINEZ/Examiner, Art Unit 1654