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 .
Withdrawn Rejections:
The rejection of claims 12-16, 18-20 and 22-23 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, is overcome by the Applicants’ amendments and is hereby withdrawn. For example, claim 12 has been amended to recite the active step of making the drug formulation.
The rejection of claims 12-16, 18-20 and 22-23 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, is overcome by the Applicants’ amendments and is hereby withdrawn. For example, claim 12 has been amended to delete the limitation “permits the formulation to be ready for parenteral administration”.
The rejection of claims 12, 15, 20 and 23 under 35 U.S.C. 102(a)(1) as being anticipated by Ludwig of record (U.S. Pub. No. 20090053391), is overcome by the Applicants’ amendments and is hereby withdrawn. For example, claim 12 has been amended to introduce the limitation of an aqueous solution of water-soluble polymer in physiological saline.
The rejection of claims 12-16, 18-20 and 22-23 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over the claims of U.S. Patent No. 11,826,492 (‘492 patent), is overcome by the Applicants’ amendments and is hereby withdrawn. For example, claim 12 has been amended to introduce the limitation of a second component comprising a water soluble solubilizer selected from the group consisting of ethanol, propylene glycol polyoxyethylene sorbitan, polyethylene glycol 200 (PEG200), PEG300, PEG400 or combination thereof.
Status of the claims
Claims 12-15, 18-20 and 22-23 are pending.
Applicant’s arguments, filed 10/28/2025, have been fully considered. Rejections and/or objections not reiterated from previous Office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Applicants’ amendments, filed on 10/28/2025, have each been entered into the record. Applicants have amended claims 12 and 20. Applicants have cancelled claim 16. Therefore, claims 12-15, 18-20 and 22-23 are subject of the Office action below.
Claim Rejections - 35 USC § 102
New Grounds of Rejection Necessitated By Applicants’ Amendments
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 12, 15, 19-20 and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al (hereinafter “Chen”, Biomaterials, 2013, 34, 1115-1127) as evidenced by Gulseren et al (hereinafter “Gulseren”, Ultrasonics Sonochemistry, 2007, 14, 173-183).
By way of a background, Applicants disclose their invention as drug formulation comprising a first component, a second component and a third component (see, e.g., page 3 of the specification). The specification (see, e.g., page 15), provides a working example of making a formulation comprising dissolving rapamycin (a first component), in ethanol (a second component); and adding the resulting solution to a water-soluble polymer (a third component) dissolved in aqueous solution of physiological saline.
Under the broadest reasonable interpretation (BRI), consistent with the specification, Applicants’ claimed invention is being interpreted as a method for making a drug formulation comprising:
a) a first component comprising at least one macrocyclic triene compound selected from the group consisting of rapamycin (sirolimus), everolimus, zotarolimus, biolimus, novolimus, myolimus, temsirolimus and a compound of formula:
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;
b) a second component comprising a water soluble solubilizer selected from the group consisting of ethanol, propylene glycol polyoxyethylene sorbitan, polyethylene glycol 200 (PEG200), PEG300, PEG400 or combination thereof; and
c) a third component comprising a globular serum protein having a molecular weight (mw) of between 65-70 KD,
wherein, the method comprises solubilizing the first component in the second component and adding the resulting solution to a third component dissolved in an aqueous physiological saline solution.
Regarding claims 12 and 20, Chen teaches a method for making a drug formulation comprising adding a solution of rapamycin dissolved in ethanol to bovine serum albumin (BSA), dissolved in PBS buffer. Chen does not teach a step of forming nanoparticles of rapamycin, ethanol, BSA or combinations thereof. Please see §s 22 and 24.
The mw of BSA is 66 KD, as evidenced by Gulseren (see page 179), who discloses mw of BSA as 66 KD.
Therefore, claims 12 and 20 are anticipated by Chen as evidenced by Gulseren.
Regarding claims 15 and 23, Chen teaches rapamycin (see discussions above).
Regarding claim 19 Chen discloses administration by intravenous injection (see page 1126).
Maintained Rejections
Claim Rejections - 35 USC § 102-Maintained
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.
The rejection of claims 12, 15, 19-20 and 22-23 under 35 U.S.C. 102(a)(1) as being anticipated by Desai002 of record (U.S. Pub. No. 20050004002), is maintained for the reasons of record set forth in the previous Office action, of which said reasons are herein reiterated.
Similar to independent claims 12 and 20, Desai002 teaches a pharmaceutical formulation comprising: i) rapamycin (a macrocyclic triene compound); ii) HSA (globular serum protein having an approximate molecular weight of between 65-70 KD, see page 11 of the specification); and iii) water. Desai002 provides a method for the making the composition by dissolving rapamycin in chloroform/ethanol (i.e., ethanol is a water soluble solubilizer), then adding the solution into an HSA solution (HSA dissolved in Hanks buffer, see ¶ 0156). Solvent was removed under reduced pressure (lyophilization) and the resulting cake was easily reconstituted by addition of sterile water or saline. The particle size after reconstitution was the same as before lyophilization. Please see ¶ 0056, Example 4.
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Desai002 does not teach a step of forming nanoparticles of rapamycin, ethanol, HSA or combinations thereof, in the formulation before lyophilization and in the formulation after lyophilization.
Therefore, claims 12 and 20 are anticipated by Desai002.
Regarding claims 15 and 23, Desai002 teaches rapamycin (see discussions above).
Regarding claim 16, Desai002 teaches ethanol (see discussions above).
Regarding claim 19 Desai002 discloses that formulations suitable for parenteral administration include aqueous injection solution. Please see ¶ 0028.
Regarding claim 22, Desai discloses that the formulations can be presented in unit-dose or multi-dose sealed containers, such as ampules and vials. Please see ¶ 0028.
Response to the Applicants’ Arguments
Applicants argue (see pages 9-10 of Remarks), alleging that the claimed inventions are not anticipated by Desai002, because Applicants have amended claims 12 and 20 to recite elements not found or considered in Desai002.
Response:
Each of the limitations recited in the rejected claims have been addressed (see discussions above). The Examiner, therefore, applies the same response hereto.
For the reasons made of record in the previous Office action, the rejections are maintained.
Claim Rejections - 35 USC § 103-Maintained
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.
The rejection of claims 12-14 under 35 U.S.C. 103 as being unpatentable over Desai002 of record, as applied to claim 12 above and in view of Betts of record (U.S. Patent No. 9,408,884), is maintained for the reasons of record set forth in the previous Office action, of which said reasons are herein reiterated.
The limitations of claim 12, as well as the corresponding teachings of Desai002 are described above, and hereby incorporated into the instant rejections.
The invention of claims 13-14 are similar to claim 12, however, claims 13-14 differ slightly from claim 12 in that claims 13-14 require a particular group of macrocyclic triene compounds.
Desai002 differs from claims 13-14 only insofar as the cited reference is not explicit in teaching the limitation of claims 13-14.
However, a person skilled in the art would have had a reasonable expectation of success in arriving at the invention of claims 13-14, because at the time of the instant invention, a particular group of macrocyclic triene compounds recited in claims 13-14, was known in the art.
For example, Betts discloses a rapamycin 40-O-cyclic hydrocarbon ester of formular
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wherein R =
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. Please see columns 1-2. Betts also teaches polyethylene oxides as an excipient for solubilizing the drug (Column 13, line 1).
Accordingly, one of ordinary skill in the art would have had a reasonable expectation of success in replacing the rapamycin of Desai002 with the compounds of Betts shown in columns 1-2, because the Desai002 and Betts compounds are very similar with respect to their chemical structure, activity, and solubility profiles. Please see MPEP §2143 (I)(B)).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a). From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Thus, the claims fail to patentably distinguish over the state of the art as represented by the cited references.
The rejection of claims 12 and 18 under 35 U.S.C. 103 as being unpatentable over Desai002of record, as applied to claim 12 above and further in view of Betts of record (U.S. Patent No. 9,408,884), is maintained for the reasons of record set forth in the previous Office action, of which said reasons are herein reiterated.
The limitations of claim 12, as well as the corresponding teachings of Desai002 are described above, and hereby incorporated into the instant rejections.
The invention of claim 18 is similar to claim 12, however, claim 18 differs slightly from claim 12 in that claim 18 requires that the global serum protein is a human serum protein having at least 90% homology to SEQ ID NO:1.
Desai002 differs from claim 18 only insofar as the cited reference is not explicit in teaching the limitation of claim 18.
However, a person skilled in the art would have had a reasonable expectation of success in arriving at the invention of claim 18, because at the time of the instant invention, a human serum protein having at least 90% homology to SEQ ID NO:1, was known in the art.
For example, Meloun teaches the complete amino acid sequence of human serum albumin (see Figure 2, page 136). When this sequence was aligned with SEQ ID NO:1, there was a 99.9% match.
See below sequence comparison:
Database (Db): Prior art sequence
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Query (Qy): Instant SEQ ID NO:1
Therefore, although Desai002 does not teach the sequence of HSA, it would have been obvious to one of ordinary skill in the art to look to the art for any known sequence of HSA. In this regard, Meloun teaches the sequence of HSA with >99% homology to SEQ ID NO:1. Thus it would have been obvious to use a known sequence of HSA with a reasonably predictable result. Since all the elements were known in the prior art, it would have been obvious to combine the known elements to arrive at the instantly claimed invention with no change in their respective functions (see MPEP §2143 (I)(A)).
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a). From the teachings of the reference, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Thus, the claims fail to patentably distinguish over the state of the art as represented by the cited references.
Response to the Applicants’ Arguments
Applicants (see pages 9-10 of Remarks), argue on the grounds of what appears to be the Applicants’ position contending that because claims 12, 15-16, 19-20 and 22-23 are allegedly not anticipated by that Desai002, Betts cannot be employed in order to address the deficiency in the teachings of Desai002.
Response:
Applicants’ arguments have been fully considered but they are not found to be persuasive.
This is because the Applicants’ allegations that claims 12, 15-16, 19-20 and 22-23 are allegedly not anticipated by that Desai002, are similar to the arguments above, which have been addressed in the discussions above. The Examiner, therefore, applies the same reasons hereto. Therefore, the use of Betts, in order to address the deficiency in the teachings of Desai002, is proper.
For the reasons made of record in the previous Office action, the rejections are maintained.
Non-Statutory Obviousness-Type Double Patenting
New Grounds of Rejection Necessitated By Applicants’ Amendments
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 12-15, 18-20 and 22-23 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over the claims of U.S. Patent No. 11,826,492 (‘492 patent) in view of: 1) Desai002 of record (U.S. Pub. No. 20050004002); and 2) Betts of record (U.S. Patent No. 9,408,884).
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent and the instant application are similarly drawn to a composition comprising a macrocyclic triene compound and HAS. For example, the claims of the instant application (e.g., claim 1), are drawn to a method for making a composition comprising a first component comprising at least one macrocyclic triene compound; a second component comprising at least one water soluble solubilizer; and a third component comprising a globular serum protein having an approximate molecular weight of between 65-70 KD, wherein, the method comprises solubilizing the first component in the second component and adding the resulting solution to a third component dissolved in an aqueous physiological saline solution, whereas, the claims of ‘492 patent (e.g., claims 1 and 3-6), are drawn to a composition comprising: i) at least one macrocyclic triene compound; ii) at least one fatty alcohol (a water soluble solubilizer); and iii) a globular serum protein having an approximate molecular weight of between 65-70 KD. Similar to instant claims, a composition of ‘492 patent do not contain nanoparticles of the components or combinations thereof.
Although the ‘492 application is not explicit in claiming: i) a second component of the claimed invention; and ii) a third component dissolved in an aqueous physiological saline solution, the selection of i) a second component of the claimed invention; and ii) a third component dissolved in an aqueous physiological saline solution from the ‘492 application embodiment, would have been obvious in view of Desai002 and Betts.
Therefore, there is sufficient overlap between the claim scopes to render them obvious over each other. Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the reference patent subject matter.
Conclusion
No claim is allowable.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IBRAHIM D BORI whose telephone number is (571)270-7020. The examiner can normally be reached on Monday through Friday 8:00AM-5:00PM(EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY S LUNDGREN can be reached on 571-272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IBRAHIM D BORI/
Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629