BSNotice 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 .
DETAILED ACTIONS
Status of claims
The amendment filed on April 20, 2026 is acknowledged. New Claims 9-10 have been canceled. Claims 1-2, 4-5, and 7-10 are under examination in the instant office action.
Applicants' arguments, filed on April 20, 2026, have been fully considered but they are moot in view of new grounds of rejections, which are necessitated by the amendments (newly added limitations and new claims). Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 presently being applied to the instant application.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9-10 are rejected 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.
New Claims 9-10 recite “the method prevents precipitation of the injection solution at a temperature of 5 °C±3°C. However, the claims 1 and 2 from which they depend are directed to a method of preventing precipitation of the injection solution at a temperature of 5 °C±3°C. Thus, they do not further limit the subject matter of the claim 1 and 2 upon which they depend.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent Claim(s) complies with the statutory requirements.
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.
Claims 1, 2, 4, 5, and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima et al. (JP 2009051766, cited in the IDS filed on 3/10/2022) in view of US 5599796 (hereafter, Schinazi) and Rowe et al. (Handbook of Pharmaceutical Excipients, 6th ed, 2009, p654-656).
Nakajima et al. disclose a method of preparing an aqueous liquid composition comprising p-boronophenylalanine (BPA) and sorbitol, wherein BPA is uniformly dissolved in a solution and the liquid composition has excellent solubility and stability and the pH is in the range of 6.5 to 7.5 (abstract, [0019], [0022], and claims 1-3). Nakajima et al. further teach that the pH of the liquid composition of the present invention is preferably a neutral pH in consideration of administration to a living body, preferably, it is in the range of 6.5 to 7.5, particularly preferably around 7.4, and suitable pH adjusting agents (hydrochloric acid, sodium hydrogen carbonate, etc.), buffers and the like may be used for adjusting the pH ([0028]). The composition is used for boron neutron capture therapy ([0002]-[0003]). Nakajima et al. also disclose a method for increasing the solubility and stability of p-boronophenylalanine in a liquid composition by sorbitol ([0018] and claim 9) and teach that the addition of sorbitol increases the solubility of BPA in water and the liquid composition containing sorbitol of the present invention was excellent in stability and liquid homogeneity ([0061] and [0062]), which implicitly means that precipitation is prevented.
Nakajima et al. specifically disclose preparing an aqueous solution comprising BPA (3.0 g), sorbitol (3.15 g in 100 mL=3.15% w/v), employing HCl as pH adjusting agent, wherein the pH of the solution is adjusted to 7.4 with HCl (pH adjusting agent) (example 1). The concentration of sorbitol falls within the range of claim 4. In addition, Nakajima et al. disclose an aqueous composition comprising BPA-fructose, and pH adjusting agent HCl to adjust the pH to 7.9 ([0058], Comparative Example 2).
Nakajima et al. also disclose that the content ratio of sorbitol is 0.9 to 2 in terms of molar ratio with respect to the content of p-boronophenylalanine (abstract and claim 1). The range falls within the range of the instant claim 5.
Nakajima et al. further teach that the liquid composition is for parenteral administration such as intravenous injection (claim 8 and [0034]).
In addition, Nakajima et al. teach that for regulating pH, the composition includes pH adjusting agent such as HCl or buffering agents such as citrate buffer, Tris-HCl buffer, or phosphate buffer and theses buffers stabilize and reduce irritation of the formulation ([0028], [0029], [0031]). It is also taught that solubilizer such as sodium citrate can be used ([0039]).
The prior art only differ from the instant claim 1 in that the claimed pH range is exceeding 7.5 and 8.0 or less while the pH range of the prior art is from 6.5 to 7.5.
However, it should be noted that the range of 6.5-7.5 taught by the prior art is adjacent to the claimed range. For example, the claimed range encompasses 7.51, which exceeds 7.5. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Also, see MPEP 2144.05. In this case, the pH of 7.5 with a preference for around 7.4 taught by the prior art is very close to the claimed pH range. Thus, it would have been prima facie obvious to arrive at the claimed pH (e.g., 7.51) because the skilled artisan would have reasonably expected that compositions having such pH would have the same properties in the absence of evidence to the contrary. Applicant has not provided any evidence showing criticality of the claimed range. In addition, it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33; In re Russell, 169 USPQ 426. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”)
As to claim 2, the prior art only differs from claim 2 in that the prior art does not specifically teach citric acid as pH adjusting agent. However, the prior art teaches and suggest the use of a buffering agent such as citrate buffer (comprising citric acid and sodium citrate) for controlling pH of the composition comprising p-boronophenylalanine and sorbitol and further teaches that the buffers stabilize and reduce irritation of the formulation. Thus, it would have been prima facie obvious to use the citrate buffer comprising citric acid and sodium citrate because such use has been already suggested by the prior art. The skilled artisan would have reasonably expected that citrate buffer would be useful for controlling and maintaining desired pH while stabilizing the composition and reducing irritation as taught by the prior art as taught by Nakajima et al. Generally, it is prima facie obvious to select a known material for incorporation into a composition based on its recognized suitability for its intended use. See MPEP 2144.07.
As to the preamble, “preventing precipitation of an injection solution containing p-boronophenylalanine or a pharmaceutically acceptable salt thereof at a temperature of 5 °C±3°C” in claims 1-2 and the wherein clause of new claims 9-10 (“the method prevents precipitation of an injection solution at a temperature of 5 °C±3°C), they are intended results of the only active method step (i.e., preparing the injection solution comprising BPA, sorbitol, sodium bisulfite or sodium pyrosulfite, and a pH adjusting agent), and as such is non-limiting since the language does not result in manipulative difference in method steps of the claims. The prior art teaches, suggests or motivates the same composition and the same step of preparing the composition as instantly claimed, thus the intended result necessarily occurs. It is noted that products of identical chemical composition cannot have mutually exclusive properties and a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). When the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Alternately, the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. See Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). “[N]ewly discovered results of known processes directed to the same purpose are not patentable." Bristol-Myers Squibb, 246 F.3d at 1376. Also, see In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980) (a case indicating that the burden of proof can be shifted to the applicant to show that the subject matter of the prior art does not possess the characteristic relied on whether the rejection is based on inherency under 35 U.S.C.102 or obviousness under 35 U.S.C. 103). In the alternative, the prior art already teaches that sorbitol improves the stability of the liquid body containing p-boronophenylalanine and the liquid composition containing p-boronophenylalanine and sorbitol has excellent solubility and stability, Thus, one of ordinary skill in the art would have reasonably expected that precipitation would be prevented at claimed temperature due to improved stability and solubility in the absence of evidence to the contrary.
As to the newly added limitations, Nakajima et al. teach that formulation additives such as antioxidants can be used according to a conventional method and suitable examples of the antioxidant include sulfite and ascorbic acid ([0037] and [0038]).
While Nakajima et al. teaches the addition of sulfite as antioxidant for the composition comprising BPA, Nakajima et al. do not specifically disclose specific species of sulfite such as sodium bisulfate and sodium pyrosulfite and its concentration.
However, sodium bisulfate and sodium pyrosulfite are well-known sulfite antioxidants which are used for parenteral formulations as evidenced by Schinazi and Rowe et al.
Schinazi teaches administering a composition comprising a boron-containing compound by any appropriate route, including intravenous injection, for boron neutron capture therapy (abstract) and discloses solutions or suspensions used for parenteral, intradermal, subcutaneous, or topical application can include antioxidant such as ascorbic acid or sodium bisulfite and buffers such as acetates, citrates or phosphates (column 48, lines 16-25).
Also, Rowe et al. teach sodium metabisulfite (sodium pyrosulfite) is used as antioxidant in oral, parenteral and topical pharmaceutical formulations at concentrations of 0.01-1.0% w/v. (p654, para 1 and 7).
It would have been obvious to a person of ordinary skill in the art to select and use a known sulfite antioxidant such sodium bisulfate or sodium pyrosulfite in the composition comprising p-boronophenylalanine because Nakajima et al. already teach and suggest the use of sulfite as antioxidant for a composition comprising p-boronophenylalanine and sorbitol and they are taught to be suitable sulfite antioxidants for parenteral formulations as evidenced by Schinazi and Rowe et al. Thus, the skilled artisan would have been motivated to do on the reasonable expectation that sodium bisulfate or sodium pyrosulfite would be suitable antioxidants for the composition comprising p-boronophenylalanine and sorbitol taught by Nakajima et al. Generally, it is prima facie obvious to select a known material for incorporation into a composition based on its recognized suitability for its intended use. See MPEP 2144.07.
As to the concentration of sodium bisulfate or sodium pyrosulfite, it would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to optimize the concentration of such antioxidant for obtaining desired effects based on the concentration range of sodium pyrosulfite disclosed in Rowe et al. Also, the concentration range of sodium pyrosulfite for use as antioxidants disclosed in Rowe et al. overlaps those claimed. 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). In addition, it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33; In re Russell, 169 USPQ 426. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”)
Claims 2, 4-5, 7-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima et al. (JP 2009051766, cited in the IDS filed on 3/10/2022) in view of PATEL et al. (WO 2004/030661, cited in the IDS filed on 3/10/2022) in further view of US 5599796 (hereafter, Schinazi) and Rowe et al. (Handbook of Pharmaceutical Excipients, 6th ed, 2009, p654-656).
Nakajima et al. as applied supra are herein applied for the same teachings in their entirety.
Nakajima et al. do not specifically disclose an embodiment of a composition comprising p-boronophenylalanine and sorbitol, which further comprise citric acid or salt thereof, and the concentration of citric acid or salt thereof.
PATEL et al. teach a composition comprising a boron-containing compound such as BPA and a polyhydroxy acid such as citric acid in a solution having a pH of 7.5 to 10.5 (abstract, pages 6, 7; claims 1, 2, 6). PATEL et al. disclose a solution comprising 100 mg BPA and 25 mg tri-sodium citrate per 1 ml solution (25 mg/ml =2.5 % w/v), wherein the concentration of the citric acid salt falls within the claimed range. In addition, PATEL et al. teaches that the presence of the polyhydroxy acid results in a clear, stable solution of the complexed boron containing compound (e.g. BPA) at high concentrations (p6, lines 20-22) and the polyhydroxy acid is added in a molar ratio ranging from 1: 10 to 10:1 in water (p7, lines 24-27).
It would have been obvious to a person of ordinary skill in the art to employ polyhydroxy acids such as citric acid in the composition comprising p-boronophenylalanine because Nakajima et al. teach and suggest the use of citrate buffer and sodium citrate for a composition comprising p-boronophenylalanine and sorbitol for improving stability and reducing irritation and PATEL et al. also teach the use of polyhydroxy acids such as citric acid in the composition comprising p-boronophenylalanine for obtaining a clear stable solution. Thus, the skilled artisan would have been motivated to do on the reasonable expectation that the addition of citric acid or its salt would further improve solubility and stability of the composition comprising p-boronophenylalanine and sorbitol. Generally, it is prima facie obvious to select a known material for incorporation into a composition based on its recognized suitability for its intended use. See MPEP 2144.07.
As to the concentration of citric acid recited in claim 7, it would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to optimize the concentration of citric acid or its salt for obtaining desired pH and solubility of the composition. Also, Patel et al. teach and suggest the range overlapping the claimed range. 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). In addition, it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33; In re Russell, 169 USPQ 426. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”)
As to the preamble, “preventing precipitation of an injection solution containing p-boronophenylalanine or a pharmaceutically acceptable salt thereof at a temperature of 5 °C±3°C” in claim 2 and the wherein clause of new claim 10 (“the method prevents precipitation of an injection solution at a temperature of 5 °C±3°C), they are intended results of the only active method step (i.e., preparing the injection solution comprising BPA, sorbitol, sodium bisulfite or sodium pyrosulfite, and a pH adjusting agent), and as such is non-limiting since the language does not result in manipulative difference in method steps of the claims. The prior art teaches, suggests or motivates the same composition and the same step of preparing the composition as instantly claimed, thus the intended result necessarily occurs. It is noted that products of identical chemical composition cannot have mutually exclusive properties and a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). When the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Alternately, the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. See Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). “[N]ewly discovered results of known processes directed to the same purpose are not patentable." Bristol-Myers Squibb, 246 F.3d at 1376. Also, see In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980) (a case indicating that the burden of proof can be shifted to the applicant to show that the subject matter of the prior art does not possess the characteristic relied on whether the rejection is based on inherency under 35 U.S.C.102 or obviousness under 35 U.S.C. 103). In the alternative, the prior art already teaches that sorbitol improves the stability of the liquid body containing p-boronophenylalanine and the liquid composition containing p-boronophenylalanine and sorbitol has excellent solubility and stability, Thus, one of ordinary skill in the art would have reasonably expected that precipitation would be prevented at claimed temperature due to improved stability and solubility in the absence of evidence to the contrary.
As to the newly added limitations, Nakajima et al. teach that formulation additives such as antioxidants can be used according to a conventional method and suitable examples of the antioxidant include sulfite and ascorbic acid ([0037] and [0038]).
While Nakajima et al. teaches the addition of sulfite as antioxidant for the composition comprising BPA, Nakajima et al. do not specifically disclose specific species of sulfite such as sodium bisulfate and sodium pyrosulfite and its concentration.
However, sodium bisulfate and sodium pyrosulfite are well-known sulfite antioxidants which are used for parenteral formulations as evidenced by Schinazi and Rowe et al.
Schinazi teaches administering a composition comprising a boron-containing compound by any appropriate route, including intravenous injection, for boron neutron capture therapy (abstract) and discloses solutions or suspensions used for parenteral, intradermal, subcutaneous, or topical application can include antioxidant such as ascorbic acid or sodium bisulfite and buffers such as acetates, citrates or phosphates (column 48, lines 16-25).
Also, Rowe et al. teach sodium metabisulfite (sodium pyrosulfite) is used as antioxidant in oral, parenteral and topical pharmaceutical formulations at concentrations of 0.01-1.0% w/v. (p654, para 1 and 7).
It would have been obvious to a person of ordinary skill in the art to select and use a known sulfite antioxidant such sodium bisulfate or sodium pyrosulfite in the composition comprising p-boronophenylalanine because Nakajima et al. already teach and suggest the use of sulfite as antioxidant for a composition comprising p-boronophenylalanine and sorbitol and they are taught to be suitable sulfite antioxidants for parenteral formulations as evidenced by Schinazi and Rowe et al. Thus, the skilled artisan would have been motivated to do on the reasonable expectation that sodium bisulfate or sodium pyrosulfite would be suitable antioxidants for the composition comprising p-boronophenylalanine and sorbitol taught by Nakajima et al. Generally, it is prima facie obvious to select a known material for incorporation into a composition based on its recognized suitability for its intended use. See MPEP 2144.07.
As to the concentration of sodium bisulfate or sodium pyrosulfite, it would have been prima facie obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to optimize the concentration of such antioxidant for obtaining desired effects based on the concentration range of sodium pyrosulfite disclosed in Rowe et al. Also, the concentration range of sodium pyrosulfite for use as antioxidants disclosed in Rowe et al. overlaps those claimed. 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). In addition, it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33; In re Russell, 169 USPQ 426. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”)
Conclusion
No claims are allowed.
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 extension fee 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 date of this final action.
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/BONG-SOOK BAEK/Primary Examiner, Art Unit 1611
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