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 .
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 .
Withdrawn Objections and Rejections
With respect to the objections and/or rejections mailed in the non-final office action on December 10, 2024:
(I) The objection of claims 2, 20 and 30 are each withdrawn in view of Applicants amendments overcoming each and every objection as set forth in the non-final discussed above.
(II) The rejection of claims 2 and 21-28 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph is withdrawn in view of Applicant’s arguments, filed 6/10/2025, on pg. 6, last paragraph of the page – pg. 7, first paragraph of the page.
(III) The rejection of claims 2-9, 14 and 20-30 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is withdrawn in view of Applicants amendments overcoming each and every rejection as set forth in the 112(b) rejection in the non-final discussed above.
(VI) The rejection of claims 14, 20 and 28 under 35 U.S.C. 102(a)(1) is withdrawn in view of Applicant’s amendment to claim 14, where the carrier is a pharmaceutically acceptable carrier.
Response to Arguments
The rejection of claims 2-9, 14, and 20-30 under 35 U.S.C. 103 is maintained.
Applicant argues in remarks filed June 10, 2025:
(A) Liu’s compound 7 in Figure 17 is merely an intermediate in the synthesis of DANA which is disclosed as being useful for the treatment of drug-related side effects and tissue damage; and there is no disclosure in the references that the compound recited in Applicant’s claims 3 and 20 has any beneficial effects, let alone usefulness in treating viruses such as corona viruses, see Applicant’s remarks, pg. 8, second paragraph from the bottom of the page.
(B) The ordinary skilled artisan would not have replaced the hydrophilic -OH functional groups of Liu with hydrophobic groups as this would change Liu’s principle operation. Thus, the Office’s conclusion to replace Cross’ compound with Liu’s compound is predicated on impermissible hindsight, see pg. 8, second paragraph from the bottom of the page.
(C) Assuming arguendo that a person having ordinary skill in the art (PHOSITA) would have been motivated to combine the references, which Applicant does not concede, the product desired would have been DANA which is the desired product in both references, and thus the PHOSITA would not have been motivated to stop at Liu’s intermediate compound 7 in the absence of the knowledge provided in the present application. Thus, the Office’s rationale is predicated on impermissible hindsight, see pg. 8, last paragraph of the page.
(D) The Office’s interpretation of the COOR2 substituent in Cross’ general formula as being COR2 was in error based on impermissible hindsight, as the Office’s rationale was based on TamilfluTM having a COC2H5 group, but that TamifluTM was not within the scope of Cross’ general formula nor was it intended to be, see pg. 9, paragraph 1.
(E) TamifluTM is not a compound of Cross’ general formula and therefore there would have been no motivation to modify Cross’ general formula to include certain structural features of TamifluTM while ignoring others. Thus, the Office’s rationale appears to be predicated on impermissible hindsight, see pg. 9, second paragraph.
With respect to Applicant’s arguments (D)-(E), the Examiner respectfully notes Applicant argues the Office is using impressible hindsight to interpret that the COOR2 group of the general formula of Cross is COR2, which is in light of the specific example of a sialic acid analogue of Cross on pg. 13, paragraph [35], second compound, known as “Tamiflu”, see Applicant’s remarks, pg. 10, last full paragraph – pg. 11 first full paragraph.
The Examiner respectfully notes Cross provides methods for preventing, inhibiting, treating or modulating a disease or an infection associated with sialidase activity comprising administering a therapeutically effective dose of at least one sialic acid compound to the subject; wherein in preferred embodiments, the disease or the infection is caused by and including HIV and corona viruses and in preferred embodiments the sialic acid compound is and includes both DANA and TamifluTM and the like that affect the action of endogenous sialidases, see paragraph [108].
Moreover, Cross teaches the COOR2 substituent where R2 is H and wherein Brown teaches H and a CH3 (methyl) group are equivalent monovalent classical bioisosteres in medicinal chemistry, thus it would be within the scope of the artisan to have substituted the hydrogen atom exemplified by Cross or a methyl group as taught by Brown as discussed in further detail in a subsequent 103 rejection below.
With respect to Applicant’s arguments (A)-(C), the Applicant argues that the Office is using impermissible hindsight for replacing the hydrophilic -OH functional groups of Liu with hydrophobic groups of the compound recited in instant claim 3 and instant claim 20 and that this would change Liu’s principle of operation, see Applicant’s remarks, pg. 12, paragraph 1.
Finally, Applicant argues that no such rationale is provided for why one of ordinary skill in the art would have used compound 7 in Fig. 17 as taught by Liu in the disclosure of Cross, and further argues arguendo that if a person having ordinary skill in the art (PHOSITA) would have been motivated to combine the references, which Applicant does not concede, the product desired would have been DANA which is the desired product in both references, and thus the PHOSITA would not have been motivated to stop at Liu’s intermediate compound 7 in the absence of the knowledge provided in the present application.
Regarding these arguments, the Examiner respectfully points out that Liu has been removed from all subsequent 103 rejections below, additionally, Cross teaches R1 to R14 are each independently and can include H, ORa or CORa, wherein each Ra may independently be and include H and a C1-C4 alkyl which may be substituted.
Moreover, Cross teaches in preferred embodiments the sialic acid compound is DANA and the like that affect the action of endogenous sialidases in preventing, inhibiting, treating or modulating a disease or an infection, wherein in preferred embodiments the disease or the infection is caused by and includes corona viruses as discussed in the subsequent 103 rejections below.
Cross also teaches sialic acid compounds are a phylogenetically conserved family and are potent modulators of biological behavior, see paragraph [06]. Cross teaches sialic acid compounds have the ability to prevent hyposialyation of cells by competitive inhibition of the endogenous sialidase(s); wherein desialyation of cells is shown to increase adhesive properties of the cells and to render cells more susceptible to invasion by infectious organisms such as HIV, see paragraph [32].
Moreover, Harless teaches DANA and DANA analogues as sialidase inhibitors in treating COVID-19 (SARS-CoV-2) as discussed in a subsequent 103 rejection below.
Furthermore, Von Izstein and Brown teach wherein R1 is O-acetyl, R3 is acetyl and R4 is methyl as required in the compound recited in claims 3 and 20 as discussed in further detail in the subsequent 103 rejection below.
Thus, one of ordinary skill could envisage to have substituted the hydrophilic groups of DANA as taught by Cross above for the hydrophobic groups as taught Von Izstein and Brown, as discussed in the 103 rejection below, as the at least one sialic acid compound which includes both DANA and the like that affect the action of endogenous sialidases in preventing, inhibiting, treating or modulating corona viruses as taught by Cross in the subsequent 103 rejections below.
As the Examiner respectfully notes, Cross teaches sialic acid compounds are a phylogenetically conserved family, are potent modulators of biological behavior, and have the ability to prevent hyposialyation of cells by competitive inhibition of the endogenous sialidase(s); and wherein desialyation of cells is shown to increase adhesive properties of the cells and to render cells more susceptible to invasion by infectious organisms for example viruses as taught by Cross above.
Thus, Applicant’s arguments have been fully considered but are not found persuasive.
Claim Status
The claim set filed on June 10, 2025 has been entered. Claims 1, 10-13 and 15-19 are canceled. Therefore, claims 2-9, 14 and 20-30 as amended are examined on the merits herein.
Priority
This application has a provisional application 63/309,117 02/11/2022.
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. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/309,117, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The application does not have support for R1 is O-acetyl, X1 is H, R2 is H or acetyl, X2 is H, R3 is H, acetyl or COCH2CX3, X3 is H, R4 is H or a C1-C6 alkyl group, X4 is H and wherein the sialidase inhibitor is not 2-deoxy-2,3-dehydro-N-acetylneuraminic acid, required in claim 2; the sialidase inhibitor of the formula claimed in claim 3, required in claim 3; R1 is O-acetyl, X1 is H, R2 is H or acetyl, X2 is H, R3 is acetyl or COCH2CX3, X3 is H, R4 is H or a C1-C6 alkyl group, and X4 is H, required in claim 14; the sialidase inhibitor of the formula claimed in claim 20, required in claim 20; the recitations of R2, R3, or R4 or combinations thereof, required in claims 21-28; or wherein R1 is O-acetyl, required in claims 29 and 30.
Thus, claims 2-9, 14 and 20-30 are interpreted to have a priority date of 02/13/2023.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
(I) Claims 2, 4-8, 21 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Cross et al. (Published 06-23-2005, WO 2005056047 A1, PTO-892 mailed 05/01/2024).
Cross teaches methods of treating, preventing, inhibiting, or modulating a viral disease or infection that comprises administering to the subject a therapeutically effective amount of at least one compound inhibiting a sialidase, see abstract; wherein the virus is a coronavirus, see pg. 41, paragraph #12. Cross teaches pharmaceutical compositions comprising the compounds, see abstract.]. Cross teaches to prolong the activity of sialic acid and its analogues and to increase its bioavailability, the molecule may be coupled to another carrier molecule, see pg. 37, paragraph [103]; and provides an example of a pharmaceutically acceptable carrier, see pg.43, paragraph #20.
Cross teaches the compounds may be administered by mouth (i.e. p.o.), see pg. 37, paragraph [104]. Cross teaches the compounds may be administered by subcutaneous injection, see pg. 37, paragraph [104]. Cross teaches the active agents may be administered into the peritoneal cavity, see pg. 37, paragraph [104]. Cross teaches that sialic acid or its analogues may be given intravenously, see pg. 37, paragraph [104].
Cross teaches sialic acid compounds which have the following structural formula,
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, wherein in preferred embodiments the compound is 2,3-deoxy-2,3-dehydro-N-acetylneuraminic acid (DANA), see pg. 4, paragraph [14]. As evidenced by Cross, the structure of DANA is as follows,
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see pg. 12, paragraph [35], DANA.
Cross teaches in preferred embodiments the disease or the infection is caused by and includes HIV and corona viruses; and in preferred embodiments the sialic acid compound is and includes both DANA and TamifluTM and the like that affect the action of endogenous sialidases, see paragraph [108].
Cross teaches sialic acid compounds are a phylogenetically conserved family and are potent modulators of biological behavior, see paragraph [06]. Crossteaches sialic acid compounds have the ability to prevent hyposialyation of cells by competitive inhibition of the endogenous sialidase(s); wherein desialyation of cells is shown to increase adhesive properties of the cells and to render cells more susceptible to invasion by infectious organisms such as HIV, see paragraph [32].
Although, Cross does not exemplify wherein the compound is not DANA, required in claim 2.
However, in the same field of endeavor of treating a viral infection, Cross teaches that R8, which corresponds to COCH3 (acetyl) in DANA, can be either CORa, wherein Ra is a C1-4 alkyl (i.e. wherein C1 is an acetyl as exemplified by DANA and C2 is a propionyl) or an H atom, see pg. 4, paragraph [14], lines 5-6. The Examiner notes when R8 is an H atom, the resulting compound is not 2-deoxy-2,3-dehydro-N-acetylneuraminic acid, required in claim 2 and wherein R1 is O-acetyl, required in claim 29. Additionally, the Examiner notes when Ra is CORa, wherein Ra is a C2-alkyl, it corresponds to a COCH2X2, wherein X2 is a C1-alkyl as recited in formula (I) of claim 2 (i.e. R2 is not H, required in claim 21).
It would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have substituted the COCH3 group as exemplified by DANA for a hydrogen atom as taught by Cross above as within the scope of the artisan as combining prior art elements according to known compositions and methods to yield predictable results. One of ordinary skill in the art would have been motivated to treat the coronavirus infection of Cross by administering a compound inhibiting a sialidase as taught by Cross with at least one sialic acid compound including both DANA and the like that affect the action of endogenous sialidases as taught by Cross above. One of ordinary skill in the art would have had a reasonable expectation of success to have modified the structural formula of Cross with the modifications as stated above, as Cross teaches R8 can be both H or a CORa, wherein Ra is a C1 alkyl (i.e. an acetyl) as discussed above.
Thus, the claimed invention as a whole would have been prima facie obvious over the combined teachings of the prior art.
(II) Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Cross et al. (Published 06-23-2005, WO 2005056047 A1, PTO-892 mailed 05/01/2024) as applied to claims 2, 4-8, 21 and 29 above, and further in view of Harless (Published 09-23-2021, WO 2021184123 A1, PTO-892 mailed 05/01/2024).
Cross addresses claims 2, 4-8, 21 and 29 as written above. Although, Cross does not teach wherein the coronavirus infection is a severe acute respiratory syndrome coronavirus 2 (SARS-CoV-2) infection.
However, in the same field of endeavor of treating coronavirus infections, Harless teaches DANA and DANA analogues as sialidase inhibitors, see paragraph [0010], in treating COVID-19 (SARS-CoV-2), see abstract.
It would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have included the SARS-CoV-2 infection as recited in instant claim 9 as the coronavirus infection as taught by Cross above as combining prior art elements according to known methods to yield predictable results. One of ordinary skill in the art would have been motivated to treat the coronavirus infection as taught by Cross above. One of ordinary skill in the art would have had a reasonable expectation of success to have included the limitation as discussed above, as both Cross and Harless are directed to treating coronavirus infections with DANA or DANA analogs as discussed above.
Thus, the claimed invention as a whole would have been prima facie obvious over the combined teachings of the prior art.
(III) Claims 14, 22, 24 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Cross et al. (Published 06-23-2005, WO 2005056047 A1, PTO-892 mailed 05/01/2024) as applied to claims 2, 4-8, 21 and 29 above, and further in view of Von Izstein et al. (Published 01 November 1994, US-5360817-A, PTO-892).
Cross addresses claims 2, 4-8, 21 and 29 as written above. Although, Cross does not teach a compound of general formula (I) wherein R1 is O-acetyl and R3 is acetyl as required in claim 14.
However, in the same field of endeavor of antiviral compositions, Von Izstein teaches derivatives and analogues of 2-deoxy-2,3-didehydro-N-acetyl neuraminic acid and their use as antiviral agents, see Col. 1, lines 1-5.
Von Izstein teaches 2-deoxy-2,3-didehydro-N-acetyl neuraminic acid is DANA, see Col. 1, 30-35.
Von Izstein teaches compounds of formula (I) depicted as,
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, see col. 2, lines 50-55, wherein R3 and R3’ are different and each denotes H or OR6, see col. 3, lines 9-10; and R5 denotes CHYR6CHYR6CH2YR6, wherein Y is O, see col.3, lines 24-25; and R6 is an acyl group having 1 to 4 carbon atoms, see col. 3, lines 3-5. The Examiner notes the recitations above correspond to formula (I) of the instant claims when R1 is O-acetyl and R3 is acetyl as required in instant claim 14, instant claim 22 and instant claim 24; additionally when R1 is O-acetyl as required in instant claim 30.
It would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have included the teachings of Von Itzstein above into the compounds of Cross above as within the scope of the artisan as simple substitutions by combining prior art elements according to known compositions to obtain predictable results. One of ordinary skill in the art would have been motivated to carry out these substitutions in order to create the derivatives and analogues of DANA as taught by Von Izstein as the at least one sialic acid compound including both DANA and the like that affect the action of endogenous sialidases as taught by Cross above. One of ordinary skill in the art would have had a reasonable expectation of success as both Cross and Von Itzstein are drawn to compounds comprising DANA analogs for use as antiviral agents.
Thus, the claimed invention as a whole would have been prima facie obvious over the combined teachings of the prior art.
(IV) Claims 3, 20, 23 and 25-28 are rejected under 35 U.S.C. 103 as being unpatentable over Cross et al. (Published 06-23-2005, WO 2005056047 A1, PTO-892 mailed 05/01/2024) and Von Izstein et al. (Published 01 November 1994, US-5360817-A, PTO-892) as applied to claims 2, 4-8, 14, 21-22, 24 and 29-30 above, and further in view of Brown ("Bioisosterism in Medicinal Chemistry" in: Brown, N., Bioisoteres in Medicinal Chemistry (Weinheim, Wiley-VCH Verlag & Co. KGaA, 2012), pp. 3-14, PTO-892).
Cross and Von Izstein address claims 2, 4-8, 14, 21-22, 24 and 29-30 as written above. As a reminder both Cross and Von Izstein teach compounds above where the compounds contain a hydrogen (H) atom located at the position corresponding to R4 of formula (I) as recited in instant claim 2 and instant claim 14. Although, Cross and Von Izstein do not teach wherein R4 as recited in formula (I) is a methyl group, as required in instant claims 3, 20, 23 and 25-28.
However, in the same field of endeavor of derivatives and analogs of DANA, Brown teaches bioisosterism in medicinal chemistry, see pg. 3, title. Brown teaches some examples of classical bioisosteres where groups in each row are equivalent; Brown exemplifies a CH3 (methyl) group is equivalent for H (a hydrogen atom), see pg. 7, table 1.3, monovalent bioisosteres.
It would have been prima facie obvious to one of ordinary skill in the art before the invention was filed to have substituted the hydrogen atom as taught by the compounds of Cross and/or Von Izstein for the methyl group as taught by Brown above as a simple substitution as combining prior art elements according to known compositions to yield predictable results. One of ordinary skill in the art would have been motivated to make the substitution as discussed above in order to create the derivatives and analogues of 2-deoxy-2,3-didehydro-N-acetyl neuraminic acid for use as antiviral agents as taught by Von Izstein above; and to use said derivatives and analogues as the at least one sialic acid compound including both DANA and the like that affect the action of endogenous sialidases as taught by Cross above. One of ordinary skill in the art would have had a reasonable expectation of success to have made the substitution as discussed above, as both Cross and Von Izstein are drawn to DANA analogs, both Cross and Von Izstein recite a hydrogen atom corresponding to R4 of formula (I) of the instant claims; and Brown teaches that CH3 (methyl) and a hydrogen atom are equivalent monovalent classical bioisosteres in medicinal chemistry as discussed above.
Thus, the claimed invention as a whole would have been prima facie obvious over the combined teachings of the prior art.
Conclusion
No claims are allowed in this action.
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/JARET J CREWS/Examiner, Art Unit 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691