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 .
Status of Claims
Receipt of Remarks/Amendments filed on 10/22/2025 is acknowledged. Claims 34, 44, 48, 51, and 53 are amended and claims 1-33, 35, and 45 are canceled. Claim 54 is new. Claims 34, 36-44, and 46-54 are currently pending and are examined on the merits herein.
Priority
The instant application filed 10/28/2022, is a continuation of PCT/US2021/031324, filed 05/07/2021, which claims benefit to provisional 63/021,931, filed 05/08/2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/25/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn Objections/Rejections
In the non-final action of 04/22/2025:
Claims 34-45, 48-49, 51, and 53 were rejected under 35 U.S.C. 103 as being unpatentable over Zaworotko in view of Felice. In view of Applicant’s remarks and amendments to the claims, the rejection has been overcome and is withdrawn.
Claims 34-53 were provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending Application No. 16/617,880 in view of Kakkar. In view of 16/617,880 being abandoned the rejection is overcome and is withdrawn.
Claims 34-53 were provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending Application No. 18/064,767 in view of Kakkar. In view of 18/064,767 being abandoned the rejection is overcome and is withdrawn.
Claim interpretation
Claim 44 defines a formulation comprising: protocatechuic acid and L-theanine or alternatively, protocatechuic aldehyde and L-theanine. The claim further recites wherein the formulation comprising protocatechuic acid and L-theanine is a cocrystal formulation. Thus, there is no requirement for the formulation comprising protocatechuic aldehyde and L-theanine to be a cocrystal formulation. The lack of cocrystal formation if further reiterated in the dependent claims which go on to define the formulation comprising protocatechuic aldehyde as just a “formulation” (claim 46, 50, and 52), while the formulation comprising protocatechuic acid is a “cocrystal formulation” (claims 48, 51, and 53). As such, there is no requirement that the formulation comprising protocatechuic aldehyde is in cocrystal form.
The following rejection is necessitated by amendment:
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.
Claim 39 is 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. Claim 34 has been amended to recite “wherein the protocatechuic acid and L-theanine are in the form of a cocrystal”. Claim 39 recites the same limitation and is ultimately dependent on claim 34. Thus, claim 39 fails to further limit the claims from which it depends. 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.
The following rejection is maintained:
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.
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.
Claims 44, 46-47, 50, and 52 are rejected under 35 U.S.C. 103 as being unpatentable over Zaworotko et al. (WO 2008153945 A2, 12/287/2008, on record), hereinafter Zaworotko in view of Felice et al. (WO 2018222713 A1, 12/06/2018, on record), hereinafter Felice, and Kakkar et al. (2014). A Review on Protocatechuic Acid and Its Pharmacological Potential, International Scholarly Research Notices, 952943, pgs. 1-9 (on record), hereinafter Kakkar.
Zaworotko teaches co-crystals comprising a nutraceutical compound and a co-crystal former (abstract; claim 1). In a preferred embodiment the nutraceutical co-crystal comprises a flavonoid as the nutraceutical such as protocatechuic acid ([094]; claim 2). In a preferred embodiment, the co-crystal former is selected from a group that includes several amino acids such as glutamic acid and glutamine ([098]; [099]; claim 3), to which theanine is highly structurally related, as evidenced by paragraph [0018] of Felice. Pharmaceutical compositions comprising the co-crystals include formulations suitable for oral and sublingual administration ([0124]). If intended for oral administration, the composition can be in the form of a tablet or a dispensable powder ([0114]), including tablets which disintegrate ([0118]).
The teachings of Zaworotko differ from that of the instantly claimed invention in that Zaworotko does not teach a formulation comprising protocatechuic aldehyde and L-theanine.
Felice teaches a water-soluble aspirin, citric acid, sodium bicarbonate, L-theanine cocrystal composition (abstract). Felice further teaches conformers that are highly structurally related to L-theanine:
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L-theanine is soluble in water ([0027]) and crosses the blood-brain barrier ([0033]). As such, a sublingual water soluble cocrystal aspirin with citric acid, sodium bicarbonate, and L-theanine that crosses the blood brain barrier would be neuroprotective against a variety of central nervous system disorders ([0034]). Pharmaceutical compositions of Felice may be prepared as oral liquids or in a dosage form such as an oral disintegrating tablet or an amount of powder ([0067]; claim 9). The water soluble cocrystal composition is also suitable for sublingual administration (abstract).
Kakkar teaches protocatechuic acid, its derivatives, and coforms (esters, aldehydes, etc.), which have been found as useful for treatment and/or prophylaxis for a large number of various ailments associated with oxidative stress damage in multiple body systems in vitro and in vivo (p. 2, right col., para. 3). The pharmacological activity of protocatechuic acid includes anticancer, antiulcer, antiaging, antifibrotic, antiviral, antiatherosclerotic, antibacterial, and neurological effects (fig. 2). Protocatechuic aldehyde, a protocatechuic acid derivative, is specifically known for its antifibrotic activity (p. 5, 6.7), antiviral activity (p. 5, 6.8), and antiatherosclerotic and hyperlipidemic activities (p. 5-6, 6.10). Like protocatechuic acid (PCA), protocatechuic aldehyde is nontoxic and a relatively safe compound for oral administration (p. 8, 8).
First, it would have been obvious to combine the compositions of Zaworotko and Felice before the effective filing date of the claimed invention to provide a composition comprising the protocatechuic acid (PCA) of Zaworotko and the L-theanine of Felice. It would have been prima facie obvious to use the L-theanine of Felice as a co-crystal former in the PCA co-crystal composition of Zaworotko since L-theanine is taught as a known and routine co-former in the art. 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. Additionally, it is obvious to combine prior art elements according to known methods to yield predictable result, such as generating a formulation which comprises both protocatechuic acid and L-theanine. One of ordinary skill in the art would have additionally been motivated to add the L-theanine since it is soluble in water and crosses the blood-brain barrier, thereby improving the properties of the combined composition. One of ordinary skill in the art would have had a reasonable expectation of success in combining L-theanine and PCA since Zaworotko cites glutamic acid and glutamine as exemplary conformers, which are highly structurally related to L-theanine, also a known conformer, as taught by Felice.
It would have been further obvious to modify the combined formulation of Zaworotko and Felice with the teachings of Kakkar by replacing the protocatechuic acid (PCA) in the combined PCA and L-theanine formulation of Zaworotko and Felice with the protocatechuic aldehyde (PA) of Kakkar to yield the instantly claimed formulation. One of ordinary skill in the art would have been motivated to replace PCA with PA in order to utilize the antifibrotic, antiviral, and antiatherosclerotic activity that PA is known for. It is also considered prima facie obvious to perform simple substitution of one known element for another to obtain predictable results, for example, generating a formulation comprising both protocatechuic aldehyde and L-theanine. One of ordinary skill in the art would have had a reasonable expectation of success in replacing PCA with PA since PA is a close derivative of PCA, and both are useful for treatment and/or prophylaxis of various ailments associated with oxidative stress damage. Additionally, both are nontoxic and relatively safe compounds for oral administration. As such, the protocatechuic aldehyde and L-theanine formulation of claim 44 would have been obvious.
Regarding claims 46 and 47, because the composition made obvious by the prior art above is identical to the composition claimed, the composition must necessarily have the characteristics claimed as an inherent property (i.e., water soluble and crosses the blood-brain barrier). It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Furthermore, Felice explicitly teaches that L-theanine is soluble in water and crosses the blood-brain barrier and is used to impart these properties on the active agent with which it is combined. As such, it is reasonable that the combined composition above which also comprises L-theanine would also possess these properties.
Regarding claims 50 and 52, it would have been prima facie obvious to formulate the combined composition of Zaworotko, Felice, and Kakkar as an oral disintegrating tablet, powder, or sublingual formulation since these forms are known and routine in the art. It would have been obvious to one of ordinary skill in the art to provide the combined composition in any of these known and effective forms depending on the form of administration desired. The combination of prior art elements according to known methods to yield predictable results is prima facie obvious. See MPEP 2143. One of ordinary skill in the art would have had a reasonable expectation of success since each of these forms are independently taught by Zaworotko and Felice, and Kakkar teaches protocatechuic aldehyde as nontoxic and safe for oral administration.
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.
Claims 34, 36-44, and 46-54 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 34-53 of copending Application No. 18/050,749 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims of ‘749 are drawn to a method of treating a disease or disorder in a subject in need thereof, comprising administering to a subject a composition comprising protocatechuic acid and L-theanine in the form of a cocrystal (copending claims 34 and 35) and the instant claims are drawn to a composition comprising protocatechuic acid and L-theanine in the form of a cocrystal. As such, the copending claims of ‘749 disclose a method of using a composition comprising a protocatechuic acid and L-theanine cocrystal, making the claimed composition obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 34, 36-44, and 46-54 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 34-55 of copending Application No. 18/050,741 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims of ‘741 are drawn to a method of manufacturing a cocrystal composition comprising protocatechuic acid and L-theanine (copending claims 49 and 50). The instant claims are drawn to a composition comprising protocatechuic acid and L-theanine in the form of a cocrystal. As such, the copending claims of ‘741 disclose a method of making a composition comprising a protocatechuic acid and L-theanine cocrystal, making the claimed composition obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 44, 46-47, 50 and 52 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 51-58 of copending Application No. 18/064,760 in view of Kakkar et al. (2014). A Review on Protocatechuic Acid and Its Pharmacological Potential, International Scholarly Research Notices, 952943, pgs. 1-9 (on record), hereinafter Kakkar.
The copending claims of ‘760 are drawn to a method of treatment comprising administering to the subject a dosage form comprising: an aspirin/L-theanine cocrystal, citric acid, sodium bicarbonate sublingual formulation (copending claim 51). Instant claim 44 is drawn to a formulation comprising protocatechuic aldehyde and L-theanine. While the copending claims of ‘760 are drawn to a method, the composition itself is obvious since it is administered in the method. The copending claims of ‘760 differ from the instantly claimed invention in that they do not teach the dosage form to contain protocatechuic aldehyde. Kakkar teaches protocatechuic acid and its derivatives (i.e., aldehydes) have been reported for their potential action such as antioxidant activity and anti-inflammatory activity among others (p. 1, introduction). Like protocatechuic acid (PCA), protocatechuic aldehyde is nontoxic and a relatively safe compound for oral administration (p. 8, 8). Therefore, it would have been obvious to replace or add in addition to aspirin, a known and routine anti-inflammatory active such as protocatechuic aldehyde in the dosage form of the ‘760 copending claims to yield a composition that is patentably indistinct from the instantly claimed composition. The inclusion of other ingredients in the dosage form of ‘760 is still within the scope of the instant claims since the instant claims use the inclusive phrase of “comprising”, meaning the instantly claimed invention may include other ingredients aside from protocatechuic aldehyde and L-theanine.
This is a provisional nonstatutory double patenting rejection.
Claims 44, 46-47, 50 and 52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 32 of U.S. Patent No. 12,268,783 in view of Kakkar et al. (2014). A Review on Protocatechuic Acid and Its Pharmacological Potential, International Scholarly Research Notices, 952943, pgs. 1-9 (on record), hereinafter Kakkar.
The ‘783 claims are drawn to a cocrystal composition comprising L-theanine; and R-Ibuprofen, wherein the cocrystal is characterized by an X-ray powder diffraction pattern (‘783 claims 1 and 32). Instant claim 44 is drawn to a formulation comprising protocatechuic aldehyde and L-theanine. The ‘783 claims differ from the instantly claimed invention in that they do not teach the composition to contain protocatechuic aldehyde. Kakkar teaches protocatechuic acid and its derivatives (i.e., aldehydes) have been reported for their potential action such as antioxidant activity and anti-inflammatory activity among others (p. 1, introduction). Like protocatechuic acid (PCA), protocatechuic aldehyde is nontoxic and a relatively safe compound for oral administration (p. 8, 8). Therefore, it would have been obvious to replace or add in addition to R-Ibuprofen, a known anti-inflammatory active such as with protocatechuic aldehyde in the composition of ‘783 to yield a composition that is patentably indistinct from the instantly claimed composition. The inclusion of other ingredients in the composition of ‘783 is still within the scope of the instant claims since the instant claims use the inclusive phrase of “comprising”, meaning the instantly claimed invention may include other ingredients aside from protocatechuic aldehyde and L-theanine.
Potential Allowable Subject Matter
Claims 34, 36-38, 40-43, 48-49, 51, 53 and 54 are free of the prior art searched.
As Applicant has discussed in the remarks of 10/22/2025, Zaworotko nor Felice explicitly or independently teach a cocrystal of protocatechuic acid (PCA) and L-theanine. The previous rejection of 04/22/2025 made obvious a cocrystal comprising the PCA of Zaworotko and the L-theanine of Felice on the basis that L-theanine is structurally similar to glutamic acid and glutamine, both of which are taught as acceptable conformers for PCA cocrystals. However, Applicant has refuted this reasoning by arguing cocrystal formation is empirical and unpredictable, citing Felice which indirectly teaches that structural analogy between amino acids does not predict cocrystal formation. Furthermore, Zaworotko does not teach a specific example that forms a co-crystal between PCA and an amino acid, rather several amino acids are listed out as acceptable conformers. As such, the prior art provides no explicit demonstration that PCA would actually form a co-crystal with any amino acid, much less L-theanine.
Examiner agrees with the Applicant, in that the formation of a PCA and L-theanine co-crystal given the teachings of Zaworotko and Felice would not have been predictable. As such, the prior art provides no showing or reasonable level of predictability in forming a co-crystal between PCA and L-theanine when the two are combined. For this reason, a protocatechuic acid and L-theanine co-crystal is novel and non-obvious over the prior art.
Response to Arguments
The majority of Applicant’s arguments have been discussed above in the potential allowable subject matter section. However, as set forth in the claim interpretation section above, the amendment to claim 44 only requires that the formulation comprising protocatechuic acid and L-theanine be formed as a cocrystal. As such, there is no requirement that the combined formulation above which comprises protocatechuic aldehyde and L-theanine actually forms a cocrystal. As such, there is still a basis for obviousness.
Conclusion
No claim is allowable currently.
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 SUSANNAH S ARMSTRONG whose telephone number is (571)272-0112. The examiner can normally be reached Mon-Fri 7:30-5 (Flex).
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616