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 .
Amendment after Non-final office action filed on March 11, 2026 is acknowledged.
Claims 2 and 6-7 have been cancelled.
Claims 1, 3-5 and 8-17 are pending in this application.
Applicant elected without traverse of Group 1 (claims 1-15) and elected the species the deoxycholic acid is conjugated to the N-terminal end of the peptide of SEQ ID NO: 1 (KFLIK), a pharmaceutical composition as the species of composition, and external preparation as the species of formulation in the reply filed on September 19, 2025. Restriction was deemed to be proper and was made FINAL in the previous office action. Claims 16-17 remain withdrawn from consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 12-15 remain withdrawn in view of Applicant’s remarks. Claims 1, 3-5 and 8-11 are examined on the merits in this office action.
This application contains claims 16-17, drawn to an invention nonelected without traverse in the paper of 9/19/2025. A complete reply to the final rejection must include cancellation of nonelected claims or other appropriate action (37 CFR 1.144). See MPEP § 821.01.
Priority
A English translation of foreign priority document was filed on March 11, 2026. However, this is not a certified English translation. Thus, the foreign priority date has not been perfected. The effective priority date is June 11, 2021 until the foreign priority date is perfected.
Withdrawn Objections
Objection to the abstract is hereby withdrawn in view of Applicant’s amendment to the abstract.
Substantial duplicate objection of claims 7-8 is hereby withdrawn in view of Applicant’s cancellation of claims 6-7.
Maintained Rejection
U.S.C. 103
9. 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.
10. 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.
11. 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.
12. 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.
13. Claim(s) 1, 3-5 and 8-11 remain/are rejected under 35 U.S.C. 103 as being unpatentable over Otterlei reference (US 2016/0279193, filed with IDS, issued as US Patent No. 10517923, cited in the previous office action) in view of Lee et al (Bioconjugate Chemistry, 2005, cited in the previous office action) and Logan reference (DermNet, April 2017, pp. 1-4, cited in the previous office action).
14. Otterlei reference teaches the same peptide sequence as instant SEQ ID NO: 1 (see SEQ ID NO: 269). Otterlei reference teaches compositions and pharmaceutical compositions comprising at least one of said agents (see for example, abstract and paragraph [0001]). Otterlei reference further teaches that the pharmaceutical compositions comprising the agent comprises the oligopeptidic compound, fusion protein or aptamer, with at least one pharmacologically acceptable carrier, excipient (see for example, paragraph [0239]), meeting the limitation of instant claims 1, 3-5 and 8-9, in part. Otterlei reference teaches that the excipient may include any excipients known in the art, for example, any carrier or diluent…for example, lactic acid, dextrose, polyethylene glycol…maltodextrin (see for example, paragraph [0245]), meeting the limitation of instant claim 10, in part. Additionally, Otterlei reference teaches that the pharmaceutical composition formulate for oral, parenteral, topical, rectal, genital, subcutaneous…intravenous administration (see paragraph [0246]), meeting the limitation of instant claim 11, in part.
The difference between the reference and instant claims is that the reference does not teach conjugation to a deoxycholic acid.
15. However, Lee et al teach insulin-deoxycholic acid chemical conjugates (see Title, for example). Lee et al teach that “bile acids have been considered very useful in the preparation of new pharmaceuticals, and more recently in the preparation of peptide and protein drugs because of their natural chemical and biological properties” (see abstract). Lee et al teach
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(see Figure 1).
In regards to claims 3-5, the claims recite an inherent property. The MPEP § 2112 states: “Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning tending to show inherency, the burden shifts to the Applicant to show an unobvious difference ‘[t]he PTO can require an Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).”
With respect to the limitation “for preventing or treating obesity” in claim 8, an intended use limitation does not impart patentability to product claims where the product is otherwise anticipated by the prior art.
With respect to the limitation in the preamble of claims 8-11, “A pharmaceutical composition for preventing or treating obesity…”, please note that MPEP 2111.02 II states "a preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention." In the instant case, the preamble does not affect the structure of the deoxycholic acid-peptide conjugate. The preamble in this case recites a statement of purpose or use, and therefore was not treated as a claim limitation.
16. Logan reference teaches that deoxycholic acid is a secondary bile acid produced by intestinal bacteria acting on primary bile acids and emulsifies fats to aid their intestinal absorption; when injected into subcutaneous fat, deoxycholic acid destroys adipocytes (fat cells) and deoxycholic acid is less destructive in skin and muscle tissue due to protein binding (see p.1, “What is deoxycholic acid?”). Logan reference teaches:
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(see p. 1, “What is deoxycholic acid used for?”).
17. Therefore, it would have been obvious to one of ordinary skill in the art to combine the teachings of Otterlei reference, Lee et al and Logan reference to arrive at peptide-deoxycholic acid conjugate of instant claims, because Otterlei reference and Lee et al teach peptide/protein compositions; Logan reference teaches the benefits of deoxycholic acid. One of ordinary skill in the art would be motivated to combine with a reasonable expectation of success, since Lee et al teach a peptide-deoxycholic acid conjugates and that that “bile acids have been considered very useful in the preparation of new pharmaceuticals, and more recently in the preparation of peptide and protein drugs because of their natural chemical and biological properties”. Lee et al teach that the deoxycholic acid attachment at the C-terminal lysine residue of the insulin. However, instant SEQ ID NO: 1 has the sequence KFLIK, thus the attachment can be made either at the N-terminal lysine (K) or at the C-terminal lysine (K). Logan reference teaches that deoxycholic acid emulsifies fats to aid their intestinal absorption; when injected into subcutaneous fat, deoxycholic acid destroys adipocytes (fat cells) and deoxycholic acid is less destructive in skin and muscle tissue due to protein binding. Therefore, one of ordinary skill in the art would be motivated to combine with a reasonable expectation of success. Thus, it is deemed that the combined arts is prima facie obvious over instant claims 1, 3-5 and 8-11.
Response to Applicant’s Arguments
18. Applicant argues that “Applicant amends claim1 to recite a deoxycholic acid-peptide conjugate in which deoxycholic acid is conjugated with a peptide consisting of an amino acid sequence of SEQ ID NO: 1, wherein the deoxycholic acid-peptide conjugate is of Formula 2.” Applicant argues that “The Office cites to Lee to allegedly teach peptide and deoxycholic acid conjugation. Lee is a research article relating to the synthesis of an insulin-deoxycholic acid conjugate and the biological properties thereof…Lee solely focuses on insulin and provides no indication that modification of other peptides would be favorable.” Applicant further argues that “…the conjugation of the present claims and of that of Lee are entirely different. There is no motivation to modify the linkage of Lee to that of the present claims.” Applicant additionally argues that “The Office then cites to Logan to allegedly teach that deoxycholic acid emulsifies fats to aid their intestinal absorption. Logan discloses the physiological and clinical benefits of deoxycholic acid itself, including that deoxycholic acid, as a type of bile acid, has the effect of emulsifying and decomposing fat and destroying adipocytes, and that it may be used for fat reduction when administered by subcutaneous injection…However, Logan does not disclose the peptide (KFLIK) of the present claims, nor does it disclose conjugating deoxycholic acid with any peptide.” Applicant argues that “Even if Otterlei, Lee and Logan were combined, which the Applicant does not concede, a person skilled in the art could not readily derive the specific structure of the present claims in which deoxycholic acid is conjugated to the free amino group at the N-terminus of the peptide of SEQ ID NO: 1…”
19. Applicant’s arguments have been fully considered but are not found persuasive. Instant claim 1 is drawn to a deoxycholic acid-peptide conjugate in which deoxycholic acid is conjugated with a peptide consisting of an amino acid sequence of SEQ ID NO: 1. Claim 1 requires that a peptide is conjugated to a deoxycholic acid. Otterlei reference teaches the 100% same sequence of instant SEQ ID NO: 1. Lee et al teach that an insulin that is conjugated to a deoxycholic acid. Thus, Lee teaches that a peptide can be conjugated to a deoxycholic acid. Lee et al teach that “bile acids have been considered very useful in the preparation of new pharmaceuticals, and more recently in the preparation of peptide and protein drugs because of their natural chemical and biological properties”. Logan reference teaches that deoxycholic acid is a secondary bile acid produced by intestinal bacteria acting on primary bile acids and emulsifies fats to aid their intestinal absorption; when injected into subcutaneous fat, deoxycholic acid destroys adipocytes (fat cells) and deoxycholic acid is less destructive in skin and muscle tissue due to protein binding. Therefore, it would have been obvious to one of ordinary skill in the art to combine the teachings of Otterlei reference, Lee et al and Logan reference to arrive at peptide-deoxycholic acid conjugate of instant claims, because Otterlei reference and Lee et al teach peptide/protein compositions; Lee et al and Logan reference teach the benefits of deoxycholic acid. One of ordinary skill in the art would be motivated to combine with a reasonable expectation of success, since Lee et al teach a peptide-deoxycholic acid conjugates and that that “bile acids have been considered very useful in the preparation of new pharmaceuticals, and more recently in the preparation of peptide and protein drugs because of their natural chemical and biological properties”. Lee et al teach that the deoxycholic acid attachment at the C-terminal lysine residue of the insulin. However, instant SEQ ID NO: 1 has the sequence KFLIK, thus the attachment can be made either at the N-terminal lysine (K) or at the C-terminal lysine (K). Logan reference teaches that deoxycholic acid emulsifies fats to aid their intestinal absorption; when injected into subcutaneous fat, deoxycholic acid destroys adipocytes (fat cells) and deoxycholic acid is less destructive in skin and muscle tissue due to protein binding. Therefore, one of ordinary skill in the art would be motivated to combine with a reasonable expectation of success.
In regards to the Applicant’s arguments that the conjugation site of the present claims and of that of Lee are entirely different, Lee et al teach the deoxycholic acid having the structure:
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. Instant deoxycholic acid has the structure:
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. Again, Lee et al teach that the deoxycholic acid attachment at the C-terminal lysine residue of the insulin. However, instant SEQ ID NO: 1 has the sequence KFLIK, thus the attachment can be made either at the N-terminal lysine (K) or at the C-terminal lysine (K). Instant claim 1 does not recite ANY functional properties of either the deoxycholic acid and the sequence KFLIK (SEQ ID NO: 1). The MPEP 2144.09 states that “A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilizes. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one of skilled in the art to make a claimed compound. IN the expectation that compounds similar in structures will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ43 (CCPA 1963)” (MPEP 2144.09 I). Additionally, the MPEP 2144.09 II states that “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious). Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007) (5(S)stereoisomer of ramipril obvious over prior art mixture of stereoisomers of ramipril.)” Therefore, it is deemed that the combined arts is prima facie obvious over instant claims 1, 3-5 and 8-11. The rejection is deemed to be proper and is maintained herein.
New Objection
20. Claim 1 is objected to for the following: Claim 1 recites, “…wherein the deoxycholic acid-peptide conjugate is of Formula 2:
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Formula 2.” The pentapeptide in the structure form is missing the corresponding sequence identifier. Applicant is required to correct this error, e.g.,. …”
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(SEQ ID NO: 1)…”
CONCLUSION
No claim is 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 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 JULIE HA whose telephone number is (571)272-5982. The examiner can normally be reached Monday-Thursday 5:00 am- 6:30 pm EST.
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/JULIE HA/Primary Examiner, Art Unit 1654
5/19/2026
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