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 .
CONTINUING DATA
This application is a 371 of PCT/US21/49350 09/08/2021
PCT/US21/49350 has PRO 63/076,133 09/09/2020
This office action is in response to Applicant’s amendment submitted October 21, 2025.
Claims 1-19 are pending.
The rejection of claim 11 under 35 U.S.C. 112(d) is withdrawn in view of Applicant’s amendment.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 11 states that residual water is reduced “and the residual is less than about 10wt%.” It is unclear whether the residual water is less than about 10wt% before or after being reduced using dry nitrogen flow. There are two possible interpretations of “the residual” because residual water is also mentioned before the dry nitrogen flow. This modified rejection was necessitated by Applicant’s 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 (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.
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) 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Racz (WO 20200028448A1, February 6, 2020, cited on IDS) in view of Mudryk (US 5,981,751, 1999, cited on IDS) and Lamberto (Organic Process Research & Development pages 1-26, cited on IDS).
Racz teaches a method for preparing solid forms of Sugammadex by crystallizing from water and methanol followed by filtering and vacuum drying at 55°C [0042]. Drying is done under nitrogen, preferably at reduced pressure [0058]-[0059]. The crystalline form is a hydrate (claim 3). The crystalline form is maintained in a relative humidity of 50-100% for a time to provide the hydrate [0070].
Racz does not teach flowing the humid gas through the wet cake of crystalline Sugammadex, water, and solvent.
Mudryk teaches that organic solvent can be removed from a pharmaceutical drug by drying in the presence of water vapor, such that the organic solvent molecules are displaced with water molecules. See abstract. The water vapor is supplied from a stream of wet nitrogen gas at around 40-50°C, or the gas temperature can be 25-90°C. Column 2, lines 1-21. The vapor space around the bulk structure should be saturated with water vapor. Column 2, lines 26-28. The process is done under vacuum, from atmospheric pressure to less than 1 mm Hg. Column 2, lines 1-7. Any extra water can be removed by any suitable drying method, such as drying under vacuum or by blow drying with dry nitrogen. Column 2, lines 26-37. The bulk crystalline substance can first be dried such that it contains 1-2% of the residual organic solvent. Column 2, lines 46-50. Removal of all organic residues is essential to meet pharmaceutical standards, and the process can provide residual solvent levels as low as 250 ppm. Column 2, lines 51-65. Water content in one example was 7.5-12%. Column 4, first paragraph.
Lamberto teaches a method for reducing solvent entrapment in an API. See title. Passing humid nitrogen through the crystalline form caused solvent to decrease due to loss of solvent versus gain of water. See end of page 20. The relative humidity ranged from about 20% to about 60% (page 19, Figure 7). Using 55% RH, more solvent was removed with longer treatment time, and the result was a crystalline hydrate (page 20, Table 3).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to dry Racz’s crystalline Sugammadex by passing humid nitrogen through the filter cake because the use of humid nitrogen removes organic solvent from the crystalline product. Racz uses methanol to crystallize the product, and removal of methanol is required for a pharmaceutical product. Mudryk and Lamberto both teach the use of humid nitrogen to displace organic solvent with water molecules, so the skilled artisan would have applied the same technique to Sugammadex in order to remove methanol. The skilled artisan would have supplied the stream of humid gas through the filter cake (as opposed to passing over the top of the filter cake) in order to remove organic solvent from the entirety of the cake. The skilled artisan would have combined the drying using humid nitrogen with conventional drying methods before or after the application of humid nitrogen as taught by Mudryk, in order to reduce the amount of organic solvent and/or to remove excess water.
The skilled artisan would have optimized the temperature, RH, and vacuum using routine experimentation to achieve the lowest levels of residual solvent. The claimed temperature, RH, and vacuum ranges overlap with or lie inside the ranges taught by the prior art. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. Additionally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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.” MPEP 2144.05.
Response to Arguments
Applicant argues that the cited references do not teach the use of moist gas to dry to crystalline Sugammadex wet cake at a relative humidity of 25% to 60%. Lamberto suggest the use of moist gas at a relative humidity of about 20% to 60%, and that the relative humidity was varied in order to optimize the results. The prior art range overlaps with 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.
Applicant argues that the ‘751 reference teaches removal of organic solvents from hydrocodone bitartrate and oxycodone hydrochloride specifically. This argument is not persuasive because the ‘751 reference teaches removal of organic solvents “from a bulk substance, for example from a pharmaceutical drug substance.” See abstract and claims. Furthermore, Lamberto is drawn to drying an API generally. Thus, the ‘751 reference is not limited to the specific examples given and the ‘751 reference is not the only reference cited.
Applicant argues that “especially given the lack of creativity and the fact that so-called “raw drug crystals” in this field actually encompass a wide variety of different substances, three-quarters of those skilled in the art cannot or would find it difficult to conclude that the drying method in Reference ‘751 can be applied to other drugs with different structures and properties (such as Sugammadex wet cake).” MPEP 2141 states that “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” Thus, Applicant’s apparent argument that the skilled artisan lacks creativity is not persuasive.
Applicant concludes that there is no reasonable motivation to combine the references and the proposed process would not be predictable without experimentation. This argument is not persuasive because Mudryk and Lamberto both teach that residual solvent can be displaced by water using humid gas. The mechanism of the solvent removal is known from the references cited. MPEP 2143 states that one rationale to support a conclusion of obviousness includes applying a known technique to a known device ready for improvement to yield predictable results. The results in this instance would have been predictable because the mechanism of solvent removal is known from the references cited, and the use of humid air has been successfully used in the specific case of Sugammadex.
For these reasons, the rejection is maintained.
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 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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/LAYLA D BERRY/Primary Examiner, Art Unit 1693