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 .
Priority
This Application filed on 02/14/2023, is a National Stage Entry of International Patent Application No. PCT/EP2021/073303, filed 08/23/2021, which claims the priority of German patent application DE10 2020 121 965.2 filed on 08/21/2020 and US provisional application 63/118,842 filed on 11/27/2020.
However, the effective filing date of the claims filed on 11/07/2023 (claims 1-5, 7, 11-13, and 15-17) is 08/23/2021. The effective filing date of a claimed invention is determined on a claim-by-claim basis. MPEP § 2152.01. Instant claims 1-5, 7, 11-13, and 15-17 are not entitled to the priority date of DE102020121965.2 filed on 08/21/2020 or the U.S. Provisional Application No. 63/118,842 filed on 11/27/2020, because these claims are not fully supported therein pursuant to § 112. DE 102020121965.2 and U.S. Provisional Application No. 63/118,842 do not, pursuant to § 112, support the claimed invention because instant claims define R1 as:
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Whereas R1 in DE 102020121965.2 and U.S. Provisional Application No. 63/118,842 is defined as:
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Instant claims 1-5 and 11-13 are denied priority date of priority documents, DE 102020121965.2 and U.S. Provisional Application No. 63/118,842 because these claims recite a definition of R1 that is not supported by these priority documents.
Instant claim 7 is denied priority date of priority documents, DE 102020121965.2 and U.S. Provisional Application No. 63/118,842 because claim 7 recites R3 is hydrogen, a definition that is not supported by the priority documents.
Instant claim 15 is denied priority date of priority documents, DE 102020121965.2 and U.S. Provisional Application No. 63/118,842 because claim 15 recite compounds that are not supported by the priority documents, e.g., 8th compound on page 5, and last three compounds of claim 15.
Instant claims 16 and 17 are denied priority date of priority documents, DE 102020121965.2 and U.S. Provisional Application No. 63/118,842 because claim 16 recites pharmaceutically acceptable salts of a compound of claim 1 that are not supported by the priority documents, and the claim 17 composition is not supported by the priority documents.
Thus, DE 102020121965.2 and U.S. Provisional Application No. 63/118,842 do not fully support claims 1-5, 7, 11-13, and 15-17 pursuant to § 112. MPEP § 211.05(A). As such, the priority date of instant claims 1-5, 7, 11-13, and 15-17 is 08/23/2021, the date of PCT/EP2021/073303.
Claims 6, 8, 9-10, and 14 are supported by the aforementioned priority documents and, as a result, get the priority date of DE 102020121965.2 and U.S. Provisional Application No. 63/118,842, and the earliest possible effective filing date of these claims is 08/21/2020.
Applicant does not provide an English translation of the foreign priority document DE 102020121965.2. Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 12/20/2023, 10/21/2024, 12/09/2024 and 07/21/2025 complies with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609. Accordingly, it has been placed in the application file and the information therein has been considered as to the merits, except where noted.
Status of Claims
Applicant’s amendments and arguments filed on 03/19/2026 have been received and have been fully considered. Claims 1 and 3 were amended, claims 11-14 were canceled, and claims 18-21 were previously canceled.
Claims 1-10, 15-17, and 22-25 are pending.
Election/Restriction
Applicant’s response filed on 11/07/2025 to Restriction/Election Requirement filed on 09/11/2025, is acknowledged. Applicant elected without traverse Group I drawn to a compound of formula (I) and a pharmaceutical composition comprising at least one compound of formula (I). Claims 1-17 read on the elected Group. Claims 22-25 of Group II and III are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Pursuant to the Election of Species Requirement, Applicant respectively elected without traverse, the compound depicted below for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.
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Currently, claims 1-2, 6, 9, and 15-17 read on the elected species. Applicant’s elected species was searched, and determined to be free of the art of record. Pursuant to MPEP § 803.02, the search and examination was extended to the non-elected species discussed below, which new search species fall within the scope of instant claims 1-17 (i.e., claims to proper Markush groupings that include both the new search species as well as the originally elected species. MPEP § 803.02(III)(C)(2)). The new search species underlie rejections of these claims pursuant to 35 U.S.C. § 102. As such, the election of species requirement is maintained as provisional, and claims 22-25 are provisionally withdrawn from consideration pursuant to 37 CFR 1.142(b). See, MPEP § 803.02.
Claims 1-10 and 15-17 are under consideration, and claims 22-25 are withdrawn from further consideration
Withdrawn Claim Objection
Objection to claim 16 for repeating “an oxalate salt” is withdrawn in view of Applicant’s amendment filed on 03/19/2026 that deleted the repetitive words.
Claim Rejections - 35 USC § 102
Rejection to claims 1, 3-4, and 16-17 under 35 U.S.C. 102 (a)(2) as being anticipated by S. Clark et al. (WO 2023/023347 A1, 02/23/2023), is withdrawn in view of Applicant’s persuasive argument filed on 03/19/2026 that argues the prior art effect of Clark and that the relied upon compound was not disclosed in the priority document, US Provisional Application No. 63/235,543 (08/20/2021).
Rejection to claims 1, 3, 6, 9, and 17 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by A. Slassi et al. (WO 2021/155470 A1, publication date 08/12/2021 (Effective filing Date 02/04/2020)), is withdrawn in view of Applicant’s amendment filed on 03/19/2026 that amended claim 1 by deleting R1 is CH(NH2)CH3 from R1 alternatives.
Withdrawn Claim Rejections - 35 USC § 103
Rejection to claims 1, 3-5, and 16-17 under 35 U.S.C. 102 (a)(2) as being anticipated by S. Clark et al. (WO 2023/023347 A1, 02/23/2023), is withdrawn in view of Applicant’s persuasive argument filed on 03/19/2026 that argues the prior art effect of Clark and that the relied upon compound was not disclosed in the priority document, US Provisional Application No. 63/235,543 (08/20/2021).
Rejection new, necessitated by the Amendment
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 7, 9 and 16-17 are rejected under 35 U.S.C. 102 (a)(2) as being anticipated by A. Chadeayne et al. US PG PUB 2023/0406824 A1, 12/21/2023 (Effective Filing Date 10/13/2020), “Chadeayne” cited in the PTO-892).
Prior Art Effect of Chadeayne
The earliest possible effective filing date of the subject claims is that of priority document No. PCT/EP2021/073303, filed 08/23/2021 (see Priority section above) (elected species has a priority date of 08/21/2020). Chadeayne is effective prior art under 35 USC § 102(a)(2) respecting the subject matter cited in this rejection as of the filing date of Chadeayne priority document US Provisional Application No. 63/090,930 (10/13/2020) because: (1) Chadeayne is U.S. patent application publication; (2) names another inventor; and (3) the subject matter of Chadeayne relied upon in this rejection is disclosed in Chadeayne’s priority document US Provisional Application No. 63/090,930 (10/13/2020), [specification, page 5 compound 12]. See MPEP § 2154.01; 35 USC § 102(d). Thus, the effective filing date of the subject matter relied upon in this rejection is 10/13/2020, which is before the claims’ earliest possible effective filing date of claims 1-5, 7, 11-13, and 15-17 (08/23/2021). See MPEP § 2154.01; 35 USC § 102(d).
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 102 as follows (see the Priority section above).
Chadeayne discloses a compound of formula (I), wherein R1 is a straight chain or branched C1-C6 alkyl or a straight chain or branched C2-C6 alkenyl; R2 and R3 are independently chosen from hydrogen, hydroxyl, —OR9, —OC(O)R8, or —OC(O)OR4, —OSO2R4; R4 is a straight chain or branched C1-C6 alkyl or a substituted or unsubstituted aryl; and R5, R6 and R7 are each independently hydrogen or a straight chain or branched C1-C6 alkyl; or a pharmaceutically acceptable acid-addition salt thereof:
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Chadeayne discloses species of formula (I), for example compound 17, [page 17, Table 3]:
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Chadeayne’s compound 17 anticipates instant claim 1, formula(I), wherein:
R1 is -O-CH3; R2 H; R3 is methyl; R4 is H.
Claim 2 is met because R1 is -O-CH3.
Claim 7 is met because Chadeayne discloses compound 16, wherein R2 is methyl and R3 is H, [page 17, Table 3, comp. 16]:
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Claim 9 is met because R4 is H.
Claim 16 is met because Chadeayne discloses that the pharmaceutically acceptable salt selected from tartrate, oxalate, and maleate. [0162].
Claim 17 is met because Chadeayne disclose a pharmaceutical composition comprising the compound above and a pharmaceutically acceptable excipient. [0036].
Rejections Modified in View of the Amendment
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 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, 3-6, 8-9, 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over A. Slassi et al. (WO 2021/155470 A1, publication date 08/12/2021 (Effective filing Date 02/04/2020) Slassi” cited in the PTO-892 dated 12/19/2025).
Slassi discloses compounds having the general structural Formula (I) or a pharmaceutically acceptable salt, solvate and/or prodrug thereof, [0023]:
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Slassi discloses species of Formula (I), for example, compound I-17 below, [Page 66, Table bridging pages 65-72, 4th compound on numbered page 66]:
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Slassi’s compound I-17 reads on instant formula (I), wherein:
R1 is -CH(-NH2)-CH3 (note that this R1 definition has no support in foreign priority document, DE102020121965.2, or U.S. Provisional Application No. 63/118,842); R2 and R3 are CD3; and R4 is H.
Deuterium anticipates H by nature. As is well known in the art, hydrogen consists of three isotopes: (1) hydrogen or protium (P or H), (2) deuterium (D); and (3) tritium (T), with atomic mass numbers 1, 2, and 3, respectively. The natural isotopic abundance of Hydrogen 1H is 99.985 % and that of 2H is 0.015 %. W. Meier-Augenstein et al., Stable Isotope Analysis: General Principles and Limitations, In Wiley Encyclopedia of Forensic Science, 1-15 (2012). Also, it more common to find deuterium bonded to a protium atom to form hydrogen deuteride, which is written as HD or 1H2H.See A. M. Helmenstine, Deuterium Facts, 2019. Thus, deuterium is involved in every synthetic reaction in which hydrogen is employed.
Slassi’s compound I-17 differs from instant claim 1, formula (I), i.e., compound of claim 15 in that Slassi’s R1 is -CH(-NH2)-CH3 (highlighted by the circle) as depicted in the below table for facile comparison:
Claimed compound, claim 15
Slassi’s compound
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However, Slassi discloses that Y in Slassi’s Formula (I) is OC(O)Q, wherein Q is alkyl substituted with N(R13)2, [Pg. 12, 4th and 6th para.], and R13 is H, C1-6 alkyl, etc. [Pg. 13, 2nd para.].
As provided in MPEP 2144.09, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure 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 USPQ 43 (CCPA 1963).
Compounds which are 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.).
Prior art structures do not have to be true homologs or isomers to render structurally similar compounds prima facie obvious. In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979). The presumption of obviousness based on a reference disclosing structurally similar compounds may be overcome where there is evidence showing there is no reasonable expectation of similar properties in structurally similar compounds. In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (appellant produced sufficient evidence to establish a substantial degree of unpredictability in the pertinent art area, and thereby rebutted the presumption that structurally similar compounds have similar properties); In re Schechter, 205 F.2d 185, 98 USPQ 144 (CCPA 1953). A prima facie case of obviousness based on structural similarity is rebuttable by proof that the claimed compounds possess unexpectedly advantageous or superior properties. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (affidavit evidence which showed that claimed triethylated compounds possessed anti-inflammatory activity whereas prior art trimethylated compounds did not was sufficient to overcome obviousness rejection based on the homologous relationship between the prior art and claimed compounds); In re Wiechert, 370 F.2d 927, 152 USPQ 247 (CCPA 1967) (a 7-fold improvement of activity over the prior art held sufficient to rebut prima facie obviousness based on close structural similarity). However, a claimed compound may be obvious because it was suggested by, or structurally similar to, a prior art compound even though a particular benefit of the claimed compound asserted by patentee is not expressly disclosed in the prior art. It is the differences, in fact, in their respective properties which are determinative of nonobviousness. If the prior art compound does in fact possess a particular benefit, even though the benefit is not recognized in the prior art, applicant’s recognition of the benefit is not in itself sufficient to distinguish the claimed compound from the prior art. In re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc).
In the instant case, and in view of MPEP 2144.09, the claimed compound and prior art compound are homologs, because Slassi’s compound differs from the instant claimed compound by the highlighted --CH3 group. Please note that the MPEP stated that “Prior art structures do not have to be true homologs or isomers to render structurally similar compounds prima facie obvious; the claimed compound and prior art compound are obvious because the claimed compound and the prior art compound have very close structural similarity; the claimed compound and prior arts compounds share very similar properties as the claimed compounds and prior art compounds have similar utilities, both are psilocin derivatives act on serotonin receptor; Slassi discloses that the highlighted region can be C1 alkyl substituted with NH2, [Pg. 12, 4th and 6th para. and Pg. 13, 2nd para.], and R13 is H, C1-6 alkyl, and Applicant does not provide evidence of unexpectedly advantageous or superior properties of the claimed compounds over the prior art compounds. Therefore, the disclosure of Slassi with respect to the Y moiety in light of the guidance from the MPEP renders claims 1, 3, 6, and 9 obvious.
Claim 4 is obvious because claim 4 recites that R1 is -CH(-NH2)-CH(-CH3)-CH3;
Claim 5 is obvious because claim 5 recites that R1 is -CH2CH2-NH2;
With regard to claim 17, Slassi discloses a pharmaceutical composition comprising the compound above and a one or more carriers. [00183].
Claim 8 differs from Slassi’s above compound in that claim 8 required that R3 is ethyl, whereas R3 of Slassi’s above compound is methyl. However, in view of the MPEP 2144.09 discussion above and Slassi’s teachings that R7 and R8 of Slassi’s Formula (I) are C1-6 alkyl, [Pg. 11, last para.], and that Slassi discloses some of psilocin derivatives with ethyl groups e.g., compounds 1-32 [Pg. 70]. Therefore, claim 8 is obvious over Slassi.
Response to Arguments
Applicant argues:
The Office's rejection is premised on a comparison between the presently claimed compounds and Compound I-17 of Slassi, and therefore constitutes an alleged lead compound analysis. Under this rationale, the Office must establish (1) that a person of ordinary skill in the art ("POSA") would have selected compound as "a lead compound" for further development based on its properties; and (2) that a POSA would have been motivated to modify the selected compound in the specific manner claimed, with a reasonable expectation of success. While the Office asserts that certain compounds share structural similarities, the mere existence of structural similarity alone does not supply the legally-required motivation to modify. The prima facie case fails at least because the Office has not established that a POSA would have selected Compound I-17 as a lead compound from among the numerous compounds disclosed in Slassi. Slassi discloses at least about 50 unique exemplified compounds, yet the Office identifies no teaching, preference, or property in Slassi that would have led a POSA to select Compound I- 17 as a lead compound for further modification. To the contrary, Example 6 of Slassi reports human 5- hydroxytryptamine receptor 2A (H5-HT2A) IC50 values for Compounds I-28, I-45, and I-46, but is silent with respect to Compound I-17. In view of this disclosure, a POSA seeking to develop 5-HT2A receptor-binding compounds would have selected Compound I-28, Compound I-45, or Compound I-46, rather than Compound I-17.
Examiner response:
Applicant’s arguments have been fully considered but found not persuasive for the reasons stated below. As provided in MPEP 2144 (IV). the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
In this case, Slassi appears to be interested in prodrug of psilocin, compound I-28 and its metabolite. However, according to MPEP 2144 (IV), one of ordinary skill in the art need not to be equally interested in prodrug I-28. Moreover, one of ordinary skill in the art have access to Slassi would select another lead because compound I-28 had an IC50 of 0.5156 µM. Slassi discloses few species with primary amines, i.e., compounds I-16, I-17, 1-36, 1-37, and 1-38, which would motivate skilled artisan to select one psilocin derivatives with primary amine for modification to improve the potency and lower the IC50. Furthermore, obviousness does not require absolute predictability, but a reasonable expectation of success. See MPEP 2143.02. Because Slassi discloses 40 compounds distributed over only 7 classes of, -P(=O)OH2, -NH2, -COOH, etc., one of ordinary skill in the art would reasonably pick the -NH2 psilocin derivative out of the small groups of compounds. Note that Slassi’s compound shares very close structure similarity with the claimed compound, and utilities, both are psilocin derivatives act on serotonin receptor; and the 103 analysis in view of the MPEP 2144.09 above renders structurally similar compounds prima facie obvious.
Applicant argues:
Slassi provides no motivation or guidance to modify Compound I-17 in the claimed manner. Even assuming in arguendo that Compound I-17 was a proper lead compound (it is not), the Office has not articulated any reason why a POSA would have been motivated to modify Compound I-17 with the specific substitution at the specific position required to arrive at the claimed compounds. Slassi's disclosure of a deuterated compound provides no guidance and does not identify any particular substitution that would be desirable. Accordingly, Slassi provides no teaching that would have led a POSA to the claimed compounds absent impermissible hindsight.
Examiner response:
Applicant’s arguments have been fully considered but found not persuasive for the reasons stated below. Slassi discloses formula (I), wherein Y is X-A, X is O and A is C(O)Q, Q is C1-20 alkyl substituted with N(R13)2, and R13 is H. ([0023], page 11, 12, 13). Thus, Slassi discloses that the highlighted region can be C1 alkyl substituted with NH2, [Pg. 12, 4th and 6th para. and Pg. 13, 2nd para.]. Slassi also discloses that the term “alkyl” as used herein, whether it is used alone or as part of another group, means straight or branched chain, saturated alkyl groups. [0049]. Thus, Slassi provide guidance to one of ordinary skill in the art to perform the modification, and in view of MPEP 2144.09, the claimed compound and prior art compound are obvious because the claimed compound and prior art compound are homologs differs by the highlighted -CH3 group; the claimed compound and the prior art compound have very close structural similarity; the claimed compound and prior arts compounds share very similar properties as the claimed compounds and prior art compounds have similar utilities, both are psilocin derivatives act on serotonin receptor; Slassi discloses that the highlighted region can be C1 alkyl substituted with NH2, [Pg. 12, 4th and 6th para. and Pg. 13, 2nd para.], and Applicant does not provide evidence of unexpectedly advantageous or superior properties of the claimed compounds over the prior art compounds.
Double Patenting
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Double Patenting over copending Application No. 18/813,131
Claims 1-2, 6, and 8-10, 15-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24, and 29 of copending Application No. 18/813,131 (US PG-PUB 2025/0066394 A1, cited in the PTO-892 dated 12/19/2025). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 1 recites a compound of formula (I) or a pharmaceutically acceptable salt thereof, wherein dependent claims 2-6, 8-10 and 15 define R1, R2, R3 and R4, wherein claim 16 recites that the salt is fumarate salt, maleate salt, oxalate salt, etc., and claim 17 recites a pharmaceutical composition comprising at least one compound of claim 1 and one or more pharmaceutically acceptable excipients:
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Copending Application No. 18/813,131 recites a compound of Formula (I) or a pharmaceutically acceptable salt thereof, wherein dependent claims 2-24 define R1, R2, R3 and R4, wherein claim 29 recites that method of treating a disease by administering a pharmaceutical composition comprising a species of claim 1 including the compound below, [claim 29, page. 17, last line]:
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The compound shown above from Copending Application No. 18/813,131 anticipates instant claims 1-2, 6, and 10, wherein R1 is O-CH2CH3; R2 and R3 are methyl; R4 is C(O)OCH2CH3.
Claim 16 is met because copending Application No. 18/813,131 recites in claim 1 a compound of formula (I) or pharmaceutically acceptable salt, and instant specification defines pharmaceutically acceptable salt as slat of oxalic acid, fumaric acid, maleic acid. [0036].
Claim 17 is met because copending Application No. 18/813,131 recites in claim 29, a pharmaceutical composition comprising a compound of claim 1.
Copending Application No. 18/813,131 recites in claim 29 the below psilocin derivative according to claim 1, page 17, 5th comp.:
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Copending Application No. 18/813,131 above compound reads on instant claims 1, wherein R2 and R3 are methyl; R4 is H, and differs from instant claim 1 formula (I) in that R1 is -OCH2CH2-phenyl, whereas instant claim R1 is -OCH2-phenyl.
However, copending Application No. 18/813,131 above compound renders the instant claims obvious in view of MPEP 2144.09 as discussed on page 10 above and because copending Application No. 18/813,131 recites compound with R1 is -OCH2-dichlorophenyl, claim 29, page 19, 2nd comp. Therefore, the copending Application No. 18/813,131 renders claim 1 obvious, claim 9 obvious because R4 is H; and claim 15 is obvious because the compound with -OCH2-phenyl recited in instant claim 15 as 9th compound on page 5.
Claim 8 differs from copending Application No. 18/813,131 above compounds in that claim 8 required that R3 is ethyl, whereas R3 of copending Application No. 18/813,131 above compounds is methyl. However, in view of the MPEP 2144.09 discussion above on page 10 and copending Application No. 18/813,131 recites in claim 19 that R2 and R3 of Formula (I) are C1-6 alkyl, claim 8 is obvious over copending Application No. 18/813,131.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Double Patenting over copending Application No. 18/420,562
Claims 1-2, 6, and 8-10, 15-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, and 3 of copending Application No. 18/420,562 (US PG PUB 2024/0269113 A1, cited in the PTO-892 dated 12/19/2025). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 1 recites a compound of formula (I) or a pharmaceutically acceptable salt thereof, wherein dependent claims 2-15 define R1, R2, R3 and R4, wherein claim 16 recites that the salt is fumarate salt, maleate salt, oxalate salt, etc., and claim 17 recites a pharmaceutical composition comprising at least one compound of claim 1 and one or more pharmaceutically acceptable excipients:
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copending Application No. 18/420,562 recites in claim 1 a compound selected from [page 4, 3rd comp.]:
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The above compound of copending Application No. 18/420,562 anticipates instant claims 1-2, 6, and 10 wherein R1 is O-CH2CH3; R2 and R3 are methyl; R4 is C(O)OCH2CH3.
copending Application No. 18/420,562 also recites in claim 1 a compound, [[page 2, 8th comp.]:
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The above compound of copending Application No. 18/420,562 anticipates instant claims 1-2, 6, and 9, wherein R1 is O-alkyl; R2 and R3 are methyl; R4 is H. Instant specification define alkyl as: the term "alkyl" refers to a monovalent saturated acyclic (i.e., non-cyclic) hydrocarbon group (i.e., a group consisting of carbon atoms and hydrogen atoms) which may be linear or branched. [Page, 3, 9-10].
Copending Application No. 18/420,562 recites in claim 1 the below compound, [[page 2, 4th comp.]:
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The above compound from copending Application No. 18/420,562 reads on instant claims 1, wherein R2 and R3 are methyl; R4 is H, and differs from instant claim 1 formula (I) in that R1 is -OCH2CH2-phenyl, whereas in instant claim 1 R1 is -OCH2-phenyl.
However, the above compound of copending Application No. 18/420,562 renders the instant claims obvious in view of MPEP 2144.09 as discussed on page 10 above and because copending Application No. 18/420,562 recites a compound wherein R1 is -OCH2-dichlorophenyl, claim 1, page 4, 5th comp. Therefore, the copending Application No. 18/420,562 renders claim 1 obvious and claim 9 obvious because R4 is H; and claim 15 obvious because the compound with -OCH2-phenyl recited in instant claim 15 as 9th compound on page 5.
Claim 16 is met because copending Application No. 18/420,562 recites in claim 1 a compound of formula (I) or pharmaceutically acceptable salt, and instant specification defines pharmaceutically acceptable salt as slat of oxalic acid, fumaric acid, maleic acid. [0035].
Claim 17 is met because copending Application No. 18/420,562 recites in claim 3, a pharmaceutical composition of compound of claim 1.
Claim 8 differs from copending Application No. 18/420,562 above compounds in that claim 8 required that R3 is ethyl, whereas R3 of copending Application No. 18/420,562 above compounds is methyl. However, in view of the MPEP 2144.09 discussion above on page 10, claim 8 is obvious over copending Application No. 18/420,562.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant argues:
The present application has an earlier effective U.S. filing date (November 27, 2020) than each of the patent applications (January 24, 2023, and August 25, 2023, respectively). MPEP § 804(I)(B)(2) states that "if a provisional statutory double patenting rejection is the only rejection remaining in an application, and that application has a patent term filing date that is later than, or the same as, the patent term filing date of at least one of the reference application(s), the rejection should be maintained until applicant overcomes the rejection."
Examiner response:
The provisional statutory double patenting rejection is not the only rejection remaining in the Application; thus, the Non-Statutory Double Patenting is maintained.
Conclusion
Claims 1-10 and 15-17 are rejected.
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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/M.M.A./Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622
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