DETAILED ACTION
This office action is in response to applicant’s filing dated December 4, 2025.
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 .
Status of Claims
Claims 49, 50, 55-57, 62, 63, and 66 are pending in the instant application. Acknowledgement is made of Applicant's remarks and amendments filed December 4, 2025. Acknowledgement is made of Applicant's amendment of claims 49, 50, 55-57, 62, and 63; and cancelation of claims 1-48, 51-54, 58-61, 64, 65, and 67.
Applicants elected without traverse (i) cannabidiol as the elected phyto-cannabinoid species, (ii) palmitoylethanolamine (PEA) as the N-acylethanolamine species, and (iii) chronic pain as the elected pain disorder species in the reply filed on March 16, 2023. The requirement is still deemed proper.
Claims 49, 50, 55-57, 62, 63, and 66 are presently under examination as they relate to the elected species: cannabidiol, palmitoylethanolamine, and chronic pain.
Priority
The present application is a divisional of US Application No. 16/557,379 filed on August 30, 2019, which is divisional of US Application No. 15/570,118 filed on October 27, 2017, which is a national stage entry of PCT/IL2016/050414 filed on April 19, 2016, which claims benefit of US Provisional Application No. 62/154,144 filed on April 29, 2015.
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Provisional Application No. 62/154,144, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
In a review of the Provisional Application No. 62/154,144, disclosure of a molar ratio between the cannabinoid and the N-acylethanolamine between about 1:0.2 to about 1:2000; 1:0.2 to about 1:5; 1:0.5 to about 1:2; 1:15 to about 1:1800; 1:25 to about 1:450; or 1:50 to about 1:100 of claims 49-54 was not identified. Moreover, disclosure of the amounts claimed in instant claims 56, 57 and 61-63 was not identified. Thus, the disclosure of the provisional application does not provide written description support for the limitations of instant claims 49-54, 56, 57, and 61-63 and the claims dependent therefrom.
The effective filing date of the instant application is April 19, 2016.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on December 4, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 49, 50, 55-57, 62, 63, and 65-67 are rejected under 35 U.S.C. 103 as being unpatentable over Symonds et al (GB 2,394,894 A, cited in a previous Office Action) in view of Hesselink et al (Journal of Pain Research, 2012; 5:437–442).
Regarding claims 49, 55, and 66, Symonds teaches the use of one or more cannabinoids for use in the treatment of chronic pain (claim 1), wherein the cannabinoids comprise cannabidiol (claim 3). Thus, Symonds teaches a method of treating chronic pain comprising administering the elected phyto-cannabinoid, cannabidiol. Symonds does not teach the composition further comprises at least one N-acylethanolamine, N-palmitoylethanolamine.
However, Hesselink teaches a case series describing the application and potential efficacy and safety of PEA (palmitoylethanolamide) in the treatment of various syndromes associated with chronic pain that is poorly responsive to standard therapies (abstract); there is clearly an urgent need for new, innovative compounds that are not only effective but have a favorable profile in terms of side effects and drug–drug interactions; not only does PEA display these characteristics, but the case series reported here suggest PEA’s therapeutic potential for different chronic and neuropathic pain states; indeed, in these cases, PEA – alone or added to standard analgesics – was able to reduce pain by 40%–80% compared to baseline scores on the NRS (page 440, left, 1st paragraph). Hesselink teaches a standardized dosing regimen of PEA in cases of neuropathic pain, independent of its etiology or pathogenesis, starting with twice-daily sublingual PEA 600 mg, for quick absorption and to avoid first-pass effects; after 10 days, we switched to tablets of 600 mg PEA twice daily, and if pain was sufficiently reduced, the dose was reduced to 300 mg twice daily (page 440, left, last paragraph). Hesselink teaches due to the first-pass effects, the bioavailability of the tablets might be somewhat less compared to the sublingual form (page 440, right, 1st paragraph). Thus, Hesselink established that it was known in the art that N-palmitoylethanolamine is useful for treating chronic pain including neuropathic pain as a monotherapy and in combination with another pain therapeutic administered in sublingual form.
Thus, it would be prima facie obvious to one of ordinary skill in the art at the time the invention was made to combine the teachings of the references so as to modify the method of treating neuropathic pain comprising administering cannabidiol taught by Symonds to further comprise palmitoylethanolamide taught by Hesselink. One would have been motivated to do so because of each of the compounds have been individually taught in the prior art to be suitable for the treatment of neuropathic pain. Moreover, the instant situation is amenable to the type of analysis set forth in In re Kerkhoven, 205 USPQ 1069 (CCPA 1980) wherein the court held that it is prima facie obvious to combine two agents each of which is taught by the prior art to be useful for the very same purpose. The idea of combining them flows logically from having been individually taught in the prior art. Applying the same logic to the instant claims, one of ordinary skill in the art would have been imbued with at least a reasonable expectation of success that by combining cannabidiol with the palmitoylethanolamide, one would have achieved a composition useful for treating neuropathic pain.
Regarding the amounts of N-palmitoylethanolamine of instant claims 49, 56, 57, 62, and 63 and the amounts of cannabidiol of instant claims 49, 50, 62, and 63, Symonds teaches one or more cannabinoids in the manufacture of a medicament for use in the treatment of chronic pain (page 4, 6th paragraph) and where the medicament is packaged for deliver as e.g. sub lingual or buccal spray a typical daily does will be less than 25 mg and typically in the range of 5-25 mg (page 4, 8th paragraph) and Hesselink teaches PEA 600 mg was administered twice daily (page 440, left, last paragraph). It would have been prima facie obvious to one of ordinary skill in the art to utilize the amounts of cannabidiol and N-palmitoylethanolamine taught by Symonds and Hesselink as a starting point for optimizing the amounts of cannabidiol and N-palmitoylethanolamine utilized to treat chronic pain since the prior art teach cannabidiol and N-palmitoylethanolamine are useful for treating chronic pain. MPEP 2144.05 states: In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Even a slight overlap in range establishes a prima facie case of obviousness. In re Peterson, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003).
Moreover, dosage, molar ratio, and dosing regimen are result-effective variables, i.e., a variable that achieves a recognized result. Therefore, the determination of the optimum or workable dosages, ratios, and dosing regimens would have been well within the practice of routine experimentation by the skilled artisan. Furthermore, absent any evidence demonstrating a patentable difference between the compositions and the criticality of the claimed dosage range, the determination of the optimum or workable dosing regimen given the guidance of the prior art would have been generally prima facie obvious to the skilled artisan. Please see MPEP 2144.05 [R-2](II)(A) and In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). ("[W]here the general conditions of claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.").
Taken together, all this would result in the practice of the method of claims 49, 50, 55-57, 62, 63, and 65-67 with a reasonable expectation of success.
Claims 49, 50, 55-57, 62-64, 66, and 67 is/are rejected under 35 U.S.C. 103 as being unpatentable over Symonds et al (GB 2,394,894 A, cited in a previous Office Action) in view of Della Valle et al (WO 2011/027373 A1, cited in a previous Office Action).
Regarding claims 49, 55, and 66, Symonds teaches the use of one or more cannabinoids for use in the treatment of chronic pain (claim 1), wherein the cannabinoids comprise cannabidiol (claim 3). Thus, Symonds teaches a method of treating chronic pain comprising administering the elected phyto-cannabinoid, cannabidiol. Symonds does not teach the composition further comprises at least one N-acylethanolamine, N-palmitoylethanolamine.
However, Della Valle teaches a pharmaceutical composition containing a therapeutically effective amount of palmitoylethanolamide (claim 1); wherein the composition is for the use in the treatment of neuroinflammatory diseases also associated to neurodegeneration (claim 10); wherein neuroinflammatory processes, also associated to neurodegeneration include chronic pain (claim 11). Thus, Della Valle established that it was known in the art that N-palmitoylethanolamine is useful for treating chronic pain.
Thus, it would be prima facie obvious to one of ordinary skill in the art at the time the invention was made to combine the teachings of the references so as to modify the method of treating chronic pain comprising administering cannabidiol taught by Symonds to further comprise palmitoylethanolamide taught by Della Valle. One would have been motivated to do so because of each of the compounds have been individually taught in the prior art to be suitable for the treatment of chronic pain. Moreover, the instant situation is amenable to the type of analysis set forth in In re Kerkhoven, 205 USPQ 1069 (CCPA 1980) wherein the court held that it is prima facie obvious to combine two agents each of which is taught by the prior art to be useful for the very same purpose. The idea of combining them flows logically from having been individually taught in the prior art. Applying the same logic to the instant claims, one of ordinary skill in the art would have been imbued with at least a reasonable expectation of success that by combining cannabidiol with the palmitoylethanolamide, one would have achieved a composition useful for treating chronic pain.
Regarding the claimed amounts of instant claims 49, 50, 56, 57, 62, and 63, Symonds teaches one or more cannabinoids in the manufacture of a medicament for use in the treatment of chronic pain (page 4, 6th paragraph) and the medicament typically comprises 5-25 mg of cannabinoid (page 4, 8th paragraph) and Della Valle teaches the dose of palmitoylethanolamide proposed for administration to a man ranges from 0.1 mg to 2 g, and preferably from 50 mg to 1000 mg. It would have been prima facie obvious to one of ordinary skill in the art to utilize the amounts of cannabidiol and N-palmitoylethanolamine taught by Symonds and Della Valle as a starting point for optimizing the amounts of cannabidiol and N-palmitoylethanolamine utilized to treat chronic pain since the prior art teach cannabidiol and N-palmitoylethanolamine are useful for treating chronic pain. MPEP 2144.05 states: In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Even a slight overlap in range establishes a prima facie case of obviousness. In re Peterson, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003).
Regarding claim 67, the wherein limitations of these claims, are considered to simply express the intended result of a process step positively recited, which is not given patentable weight (See MPEP 2111.04: [T]he court noted (quoting Minton v. Nat'lAss'n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQgd 1614, 1690 (Fed. Cir. 2003)) that a "'whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.'" Hoffer v. Microsoft Corp., 405 F.3d 1396, 1399, 74 USPQgd 1481, 1483 (Fed. Cir. 2005).).
Taken together, all this would result in the practice of the method of claims 49, 50, 55-57, 62, 63, 66, and 67
Regarding claim 64, Symonds teaches the cannabinoid medicament is packaged for delivery as a sublingual or buccal spray (page 4, 8th paragraph). Della Valle teaches the palmitoylethanolamide formulation can be suitable for oral, buccal, or transdermal administration. Buccal reads on formulated for oral mucosal administration. It would have been prima facie obvious to one of ordinary skill in the art to formulate the cannabidiol and palmitoylethanolamide in a buccal formulation for use in a method of treating chronic pain since the prior art teaches cannabidiol and palmitoylethanolamide can be formulated in a buccal composition.
Taken together, all this would result in the practice of the method of claim 64 with a reasonable expectation of success.
Response to Arguments
Rejection under 35 U.S.C. § 103 rejection in view of Symonds and Gatti
Applicant's arguments have been fully considered but are not persuasive.
Since a new rejection was issued (see above), it is the Examiner’s belief that most of the arguments presented by Applicant have been considered/answered in the rejection itself, so only those arguments not addressed in the rejection are being considered below:
Applicant argues:
Based on the cited art, a person of ordinary skill in the art would not have motivated to combine the Applicant’s claimed actives at the claimed amounts and via the claimed routes of administration for the treatment or prevention of pain. Furthermore, a person of ordinary skill would not have reasonably expected such a combination to successfully treat or prevent pain nor extend pain relief. Symonds teaches away from the claimed dose of cannabinoid. Symonds demonstrates that THC and CBD mixtures when formulated as cannabis-based medical extracts do not achieve pain relief below 17 mg of cannabinoid. Symonds does not describe the claimed amounts as “somewhat inferior.” Rather, Symonds demonstrates that doses ≤ 17 mg are inoperative for Applicant’s intended use, namely for preventing or reducing pain. Symonds’s formulation of THC alone, the total daily dose was 18 mg, which is nearly double Applicant’s claimed amounts. This means that pain relief was not obtained at cannabinoid doses at or below 17 mg. As such, a person of ordinary skill would not have expected to achieve pain relief at the claimed amounts of cannabinoid based on the teachings of Symonds.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
MPEP 2123 states:
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
In the instant case, as set forth above, Symonds teaches one or more cannabinoids in the manufacture of a medicament for use in the treatment of chronic pain and where the medicament is packaged for deliver as e.g. sub lingual or buccal spray a typical daily does will be less than 25 mg and typically in the range of 5-25 mg. As set forth above, Hesselink teaches PEA was known to be useful for treating chronic pain. As set forth above, it would have been prima facie obvious to one of ordinary skill in the art to utilize the amounts of cannabidiol and N-palmitoylethanolamine taught by Symonds and Hesselink as a starting point for optimizing the amounts of cannabidiol and N-palmitoylethanolamine utilized to treat chronic pain since the prior art teach cannabidiol and N-palmitoylethanolamine are useful for treating chronic pain. One of ordinary skill in the art would expect that effective doses of THC in combination with a second cannabinoid will differ depending specific compound used and would be motivated to utilize amounts of THC taught by Symonds and amounts of PEA taught by Hesselink as a starting point for optimizing the amounts of cannabidiol and N-palmitoylethanolamine utilized to treat chronic pain.
Applicant argues:
Symonds teaches that specific routes of administration are ineffective to provide pain relief at low doses of cannabinoid. Symonds discourages gastrointestinal administration routes (i.e. oral and rectal) because they are "slow and produce variable effects, due to the poor and varied absorption from the gut." As such, Symonds indicates that a greater cannabinoid dose is required when selecting an administration route other than a sublingual or buccal route. Also, Symonds notes that disfavored administration routes (i.e., routes other than sublingual or buccal) are difficult to titrate accurately to attain pain relief (Id.), and thus further discourages using a disfavored administration route requiring greater cannabinoid doses.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
MPEP 2123 states:
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
In the instant case, as set forth above, Symonds teaches one or more cannabinoids in the manufacture of a medicament for use in the treatment of chronic pain and where the medicament is packaged for deliver as e.g. sub lingual or buccal spray a typical daily does will be less than 25 mg and typically in the range of 5-25 mg. As set forth above, Hesselink teaches PEA was known to be useful for treating chronic pain. As set forth above, it would have been prima facie obvious to one of ordinary skill in the art to utilize the amounts of cannabidiol and N-palmitoylethanolamine taught by Symonds and Hesselink as a starting point for optimizing the amounts of cannabidiol and N-palmitoylethanolamine utilized to treat chronic pain since the prior art teach cannabidiol and N-palmitoylethanolamine are useful for treating chronic pain.
Applicant argues:
Applicant's data show unexpected technical results for the extension of
therapeutic window compared to Symonds and Gatti. Not only does the Office fail to establish a prima facie case (for the reasons discussed above), but also Applicant's claimed method provides surprising results that overcome any prima facie case that the Office could have made. In particular, the claimed combination therapy surprisingly extends the duration of an analgesic effect of a cannabinoid by administering a pharmaceutical composition comprising at least one cannabinoid and PEA, allowing for a prolonged therapeutic window that was not recognized by the cited art.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
MPEP 716.02 states:
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). In the instant case, in a review of the specification, data for PEA treatment alone was not identified. Thus, it is not clear from the evidence provided if the differences were indeed unexpected and more than an additive effect.
Moreover, MPEP 716.02(d) states:
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In the instant case, the data provided is for a single phyto-cannabinoid compound, tetrahydrocannabinol (THC), which is not presently under examination. A single example is not sufficient to support unexpected properties for the full scope of the instant claims. Thus, the argument is not found persuasive.
Rejection under 35 U.S.C. § 103 rejection in view of Symonds and Della Valle
Applicant argues:
A person of ordinary skill in the art would not have reasonably expected to successfully treat pain when using the claimed low dose amounts of cannabinoid and the claimed administration routes in light of the deficiencies in Symonds already discussed above. Della Valle does not address these deficiencies because it, like Gatti, does not provide a reason to select the claimed amounts of cannabinoid to deliver via the claimed administration routes in combination with PEA. Della Valle cannot refute Symonds's teaching away from the claimed dose or administration route of cannabinoid and provides no suggestion to combine PEA
with a cannabinoid.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
Applicant has not independently argued the merits of this rejection. Arguments regarding Symonds have been addressed above. Therefore, the rejection is maintained for the reasons set forth on the record and for those set forth in the response to the arguments above.
Applicant argues:
Neither Symonds nor Della Valle suggests combining PEA and cannabinoid to prolong the duration of pain relief. Even if the Office had established a prima facie case of obviousness based on the combination of Symonds and Della Valle (which it has not), then the surprising results Applicant identified from such a combination would overcome any such case.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
MPEP 716.02 states:
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). In the instant case, in a review of the specification, data for PEA treatment alone was not identified. Thus, it is not clear from the evidence provided if the differences were indeed unexpected and more than an additive effect.
Moreover, MPEP 716.02(d) states:
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In the instant case, the data provided is for a single phyto-cannabinoid compound, tetrahydrocannabinol (THC), which is not presently under examination. A single example is not sufficient to support unexpected properties for the full scope of the instant claims. Thus, the argument is not found persuasive.
Conclusion
Claims 49, 50, 55-57, and 62-67 are rejected.
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYNA B RODRIGUEZ whose telephone number is (571)272-7088. The examiner can normally be reached 8am-5:00pm, Monday - Thursday.
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/Rayna Rodriguez/ Primary Examiner, Art Unit 1628