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 .
Claims 68-84 and 89-92 are presented for examination.
The amendments and affidavit filed on 11/06/2025 has been received and entered.
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.
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.
Claim(s) 68-84 and 88-92 is/are rejected under 35 U.S.C. 103 as being unpatentable over Joshi et al. (WO
2019183142) in view of Agatemor et al. (WO 2019099837) and further in view of JP2008162899.
Joshi et al. teach methods for treating a disease or a condition related to rosacea in an individual in need
thereof, comprising administering to a skin of the individual a composition comprising: (a) an ionic liquid
comprising a choline cation and geranic acid anion; and (b) a pharmaceutically acceptable solvent. See
Para [0003]. Joshi teaches that the ionic liquid comprises the choline cation and geranic acid anion in a
molar ratio in a range of 1: 1 to 1 :4 of choline cation to geranic acid anion. In some embodiments, the
ionic liquid comprises the choline cation and geranic acid anion in a molar ratio of 1: 1, 1 :2, 1 :3, or 1 :4
of choline cation to geranic acid anion. See Para [0004]. In some embodiments the composition is
formulated for transdermal administration. In some embodiments, the composition further comprises
an additional therapeutic agent selected from the group consisting of: a small molecule drug, an
antimicrobial agent, a protein, a peptide, an antibody, a nucleic acid, a chemotherapy agent, and a
combination thereof. In some embodiments, the composition is formulated as a gel, lotion, cream,
ointment, solution, or a patch. In some embodiments, erythema of the skin of the individual is reduced.
In some embodiments, inflammation of the skin of the individual is reduced. In some embodiments,
lesions on the skin of the individual are reduced. See Para [0005]. The composition is formulated for
transdermal administration. In some embodiments, the gelling agent is selected from the group
consisting of: hydroxyethyl cellulose (HEC), hydroxypropyl cellulose (HPC), hydroxypropylmethyl
cellulose (HPMC), and a combination thereof. See Para [0013]. The use of butyric acid and valeric acid as claimed in claim 75 is taught in combination with a choline cation in Para [0056]. Joshi teaches that
the term choline refers to the class of quaternary ammonium salts containing the N,N,N-
trimethylethanolammonium cation. Joshi teaches that an organic acid such as acetic acid, propionic
acid, hexanoic acid, cyclopentane propionic acid, glycolic acid, pyruvic acid, lactic acid, malonic acid,
succinic acid, malic acid, maleic acid, fumaric acid, trifluoroacetic acid, tartaric acid, citric acid, benzoic
acid, 3-(4-hydroxybenzoyl)benzoic acid, cinnamic acid, mandelic acid, methanesulfonic acid,
ethane sulfonic acid, I,2-ethanedisulfonic acid, 2-hydroxyethanesulfonic acid, benzenesulfonic acid,
toluene sulfonic acid, 2-naphthalenesulfonic acid,4-methylbicyclo- [2.2.2]oct-2-ene-l-carboxylic. acid,
glucoheptonic acid, 4,4'-methylenebis-(3-hydroxy-2-ene-l - carboxylic acid), 3-phenylpropionic acid,
trimethylacetic acid, tertiary butylacetic acid, lauryl sulfuric acid, gluconic acid, glutamic acid,
hydroxynaphthoic acid, salicylic acid, stearic acid, muconic acid can be used in combination with choline.
See Para [0063]. Joshi further teaches composition comprising 20% to 60% of an ionic liquid comprising
a choline cation and a geranic acid anion, 5% to 20% propylene glycol, and a remaining balance of water.
See Para [0128].
Joshi makes clear that choline cation in the form of quaternary ammonium compound has been
previously used in combination with the claimed carboxylic acids. Joshi makes clear that that the term
choline refers to the class of quaternary ammonium salts containing the N,N,N-
trimethylethanolammonium cation. The use of peptide and an antibody is taught in Paras [0005], [0013] and [0081]. The use of monocarboxylic acid having less than 4 carbons is taught in Paras [0056] and [0063].
Joshi differs from the claimed invention in not teaching the mixture two ionic liquid and specifically
teaching the oral, nasal or vaginal administration and the quaternary ammonium having a hydroxyl
group.
Agatemor teaches orally administering the active compound in combination with a composition
comprising an ionic liquid of choline and geranate (CAGE). See the abstract. Agatemor teaches that
formulated as an oral, subcutaneous, or parenteral formulation, or for administration to a mucus membrane, e.g. nasal, oral, or vaginal. The oral formulation is a degradable capsule comprising the
combination of the active compound and CAGE. See the abstract and claim 1.
JP Patent teaches an ionic liquid having high safety and it is applicable in medical field. See the abstract.
JP Patent teaches that the cation moiety in the ionic liquid represented by the general formula (1) is an
aliphatic quaternary ammonium cation composed of choline or a choline derivative which is a naturally
derived compound.
JP Patent further teaches that the anion moiety is a carboxylate anion comprising a naturally derived
compound and / or a biologically relevant compound approved as a drug, and particularly preferably a
carboxylate anion having a weak intermolecular interaction. Specific examples of preferred anions from
the viewpoint of lowering the melting point and lowering viscosity include maleate anion, succinate
anion, propionate anion, glycolate anion and benzoate anion. See the claims. JP patent makes clear
that the claimed quaternary ammonium compounds have been previously used in an ionic liquid
composition.
It would have been obvious to a person skilled in the art to use the combination of a choline cation and
an acid in an oral, nasal and vaginal form, motivated by the teachings of Agatemor, which teaches the
use of the claimed routes of administration as old and well known. The use of the degradable capsule is
also taught by Agatemor. Furthermore, the determination of route of administration of a composition
taught by Joshi, is considered to be within the skill of artisan in the absence of evidence to the contrary.
To combine two ionic liquids and use them for the same purpose would have been obvious to a person
skilled in the art in the absence of evidence to the contrary. Applicant's attention is drawn to in re
Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), where the court states that "It is
prima facie obvious to combine two compositions each of which is taught by the prior art to be useful
for the same purpose, in order to form a third composition to be used for the very same purpose
[T]he idea of combining them flows logically from their having been individually taught in the prior art. The use of quaternary compounds having a hydroxyl group is taught in JP Patent. The determination of
optimum proportions or amounts are considered to be within the skill of artisan in the absence of
evidence to the contrary.
Applicant has presented no evidence to the unobvious and unexpected nature of the claimed invention,
and as such, claims 68-84 and 88-92 are properly rejected under 35 U.S.C. 103 (a).
Response to Arguments
Applicant’s arguments have been noted. Applicant in his remarks argues that “The instantly claimed methods and compositions provide such unexpected and surprising results.
For example, the primary reference Joshi is characterized by the Office as disclosing the ionic liquid (IL)
choline geranate (CAGE). NFOA at 3. Agatemor is also characterized by the Office as disclosing the ionic liquid CAGE. Id. at 4. The Office does not allege any specific ionic liquid is taught by JP Patent. Id. at 5. The Office does not allege that any of the cited art teaches how to provide any result which is improved as compared to CAGE”. It is the examiner’s position that Joshi makes clear that choline cation in the form of quaternary ammonium compound has been previously used in combination with the claimed carboxylic acids. Joshi makes clear that that the term choline refers to the class of quaternary ammonium salts containing the N,N,N-trimethylethanolammonium cation. The use of peptide and an antibody is taught in Paras [0005], [0013] and [0081]. The use of monocarboxylic acids, such as propionic and butyric being used in combination with choline is taught in Para [0056] and [0068]. Therefore, Joshi teaches the use of the claimed acids, propionic acid, geranic acid, butyric acid in combination with a quaternary ammonium. The advantages shown in the affidavit are the inherent property of Joshi et al. which teaches the combination of choline compound with acids, such as propionic, butyric, valeric, geranic and many others. Applicant in his remarks further argues that “Accordingly, it is clearly demonstrated that the instantly claimed compositions are superior in at
least one property compared to the prior art, e.g., CAGE, and provide results which are more than what could have been predicted on the basis of the cited art”. It is the examiner’s position that the claims of the instant application are also drawn to the mixture of choline and geranic acid (claims 75 and 76). Therefore, selecting propionic acid and butyric acid in combination with choline, which are also taught by Joshi to show the superiority over choline geranate is the inherent property of Joshi as well.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZOHREH A FAY whose telephone number is (703)756-1800. The examiner can normally be reached Monday-Friday 9:30AM-6:00.
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/ZOHREH A FAY/Primary Examiner, Art Unit 1617