DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
Claims 1-13 are pending and are under examination.
Priority
This application is a continuation of U.S. Application No. 17/001,124, filed August 24, 2020; which is a divisional of U.S. Application No. 15/837,283, filed December 11, 2017, which is a continuation of U.S. Application No. 13/909,891, filed June 4, 2013; which claims priority to U.S. Provisional Application No. 61/655,891, filed June 5, 2012.
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.
Claims 3-6 and 9-13 are 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.
Claims 3 and 9 recite the limitation wherein the composition contains a compound wherein “the compound has at least 90% purity”. This is indefinite because Claim 2 explicitly mentions the name of the compound, i.e., 7-methanesulfonylheptanenitrile, which is a single distinct entity and is 100% itself. Thus, it is not clear what the term 7-methanesulfonylheptanenitrile represents if it can contain 10% of something else. Therefore, one of ordinary skill in the art is not apprised of the metes and bounds of the claimed invention. Claim 9 has the same problem. Dependent Claims 4-6 and 10-13 suffer from the same issue since they depend from Claims 3 and 9, respectively.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
A. Claims 1, 2, and 8 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Hsi et al. (“Synthesis of Some Analogs of Rorifone.” Scientia Sinica (English Edition) (1974), 17(6), pp. 743-751.)
Claimed invention
Claim 1 is directed to a pharmaceutical composition comprising a pharmaceutically acceptable carrier and 5-methanesulfonylpentanenitrile or 7-methanesulfonylheptanenitrile.
Prior art
Hsi et al. presented a report of the expectorant activity of analogs of rorifone, said rorifone having the formula MeSO2CH2(CH2)7CH3CN. The analogs included compounds of formula MeSO2(CH2)nCN , where n is 1, 2, 3, 4, 5, 6, 7, 8, 10, or 11. See abstract, p. 746. Instant compounds 5-methanesulfonylpentanenitrile and 7-methanesulfonylheptanenitrile are represented by the compound where n is 4 or 6, respectively. The compounds were subjected to pharmacological screening (Phenol Red test for expectorant activity in mice). The compounds where n is 1, 2, 3, 4, 5, 6, 7, 8, 10, or 11 – including instant compounds 5-methanesulfonylpentanenitrile and 7-methanesulfonylheptanenitrile – showed no obvious activity in animal tests. It was noted however that the compounds showed no toxicity. See p. 746. It is apparent that the compound given to the mice have a pharmaceutical carrier because the compound was delivered to mice for analysis of therapeutic efficacy.
Therefore, Hsi anticipates the claimed composition containing a pharmaceutically acceptable carrier and 5-methanesulfonylpentanenitrile or 7-methanesulfonylheptanenitrile.
Claims 2 and 8 read on 5-methanesulfonylpentanenitrile or 7-methanesulfonylheptanenitrile, respectively. Each one of 5-methanesulfonylpentanenitrile and 7-methanesulfonylheptanenitrile are represented by the compound structures at p. 744 where n is 4 or 6, respectively.
B. Claims 1 and 8 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Al-Gendy et al. (“Glucosinolates, volatile constituents and biological activities of Erysimum corinthium Boiss. (Brassicaceae)” Food Chemistry. Volume 118, Issue 3, 1 February 2010, Pages 519–524).
Claimed invention
Claim 1 is directed to a pharmaceutical composition comprising a pharmaceutically acceptable carrier and 5-methanesulfonylpentanenitrile or 7-methanesulfonylheptanenitrile.
Prior art
Al-Gendy investigated the biological activity of extracts of fresh leaves, roots and ripe seeds of Erysimum corinthium Boiss (Brassicaceae) to uncover their glucosinolate contents through exogenous myrosinase hydrolysis (Method A) and natural autolysis (Method B). The compound, 4-(Methylsulfonyl)pentane nitrile –
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(i.e., erysoline nitrile or 5-methanesulfonylpentanenitrile) – is one of the glucosinolate hydrolysis products identified in leaves and root of E. corinthium using either method. See Fig.2 and Fig.3. All tested extracts showed inhibition of growth for the tested organisms, except A. flavus, which means that the E. corinthium extract has the ability to inhibit the growth of Gram-positive and Gram-negative bacteria, as well as fungi. See Section 3.2. ‘Antimicrobial activity’; Table 3. The 5-methanesulfonylpentanenitrile-containing extract obtained by the natural autolysis method comprises extraction from homogenized plant root or leaf in water. See Section 2.2.2. ‘Natural autolysis (method B)’. This represents a pharmaceutical composition containing water as the pharmaceutically acceptable carrier, which anticipates the claim.
Claim 8 requires 5-methanesulfonylpentanenitrile. Al-Gendy explicitly teaches 5-methanesulfonylpentanenitrile as outlined above.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
A. Claim 2 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Al-Gendy et al. (“Glucosinolates, volatile constituents and biological activities of Erysimum corinthium Boiss. (Brassicaceae)” Food Chemistry. Volume 118, Issue 3, 1 February 2010, Pages 519–524).
Claimed invention
Claim 2 is drawn to the pharmaceutical composition of Claim 1 but requires 7-methanesulfonylheptanenitrile in combination with the pharmaceutical carrier.
Prior art
The limitations of Claims 1 and 8 are met by Al-Gendy as outlined in the anticipation rejection above. While Al-Gendy teaches that a 5-methanesulfonylpentanenitrile-containing composition provides antimicrobial activity, Al-Gendy does not expressly teach its 7-methanesulfonylheptanenitrile analogue. However, 7-methanesulfonylheptanenitrile,
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, is very similar structurally to 5-methanesulfonylpentanenitrile and differs from 5-methanesulfonylpentanenitrile by only TWO methylene groups (-CH2-). It is well understood by chemists that the members of a homologous series of chemical compounds possess the same principal characteristics; that generally the chemical and physical properties of the individual members vary gradually from member to member; and that knowledge of the properties and chemical behavior of one of the members of the series suggests to the chemist the properties and chemical behavior of the other members of the series. In this case, 5-methanesulfonylpentanenitrile is disclosed as a hydrolysis product in E. corinthium, that has antimicrobial activity. One of ordinary skill in the art would have found it obvious to use a structurally similar homologue such as 7-methanesulfonylheptanenitrile with a pharmaceutical carrier with a reasonable expectation that a pharmaceutical carrier would be suitable for 7-methanesulfonylheptanenitrile to provide it in a form that is used to deliver 7-methanesulfonylheptanenitrile for its antimicrobial activity.
B. Claims 3-6 and 9-12 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Al-Gendy et al. (“Glucosinolates, volatile constituents and biological activities of Erysimum corinthium Boiss. (Brassicaceae)” Food Chemistry. Volume 118, Issue 3, 1 February 2010, Pages 519–524), as applied to Claim 2 above, taken in view of Perry et al. (US 2006/0217347).
Claimed invention
Claim 3 limits Claim 2, wherein the compound has at least 90% (w/w) purity, and the composition is in a topical form of gels, creams, lotions, ointments, or patches. Claim 9 is similar but depends from Claim 8.
Claim 4 limits Claim 3, wherein the pharmaceutically acceptable carrier is an emollient selected from the group consisting of. lauryl lactate, diethylene glycol monoethyl ether, caprylic/capric triglyceride, octisalate, silicone fluid, squalene, and sunflower oil. Claim 10 is similar but depends from Claim 9.
Claim 5 limits Claim 4, wherein the pharmaceutically acceptable carrier is a permeation enhancer selected from the group consisting of lactate esters and diethylene glycol monoethyl ether. Claim 11 is similar but depends from Claim 10.
Claim 6 limits Claim 5, further comprising acrylates/C10-30 alkyl and tris(2-hydroxyethyl)amine. Claim 12 is similar but depends from Claim 11.
Prior art
As outlined above, Al-Gendy suggests pharmaceutical compositions containing the known E. corinthium extract, 5-methanesulfonylpentanenitrile, or its homologue, 7-methanesulfonylheptanenitrile, and a pharmaceutical carrier for use to provide antibacterial efficacy. Al-Gendy further teaches all tested extracts showed inhibition of growth for the tested Gram-positive and Gram-negative bacteria and fungal organisms including, inter alia, S. aureus, S. faecalis, and E. coli, except A. flavus. See Table 3. See also Section 3.2. ‘Antimicrobial activity’.
While Al-Gendy suggests pharmaceutical compositions comprising a pharmaceutical carrier and 5-methanesulfonylpentanenitrile or 7-methanesulfonylheptanenitrile, Al-Gendy does not expressly teach 1) specific formulations of topical compositions (e.g., gels, cream, etc.), 2) that the carrier is a penetration enhancer or an emollient or 3) the composition further comprising acrylates/C10-30 alkyl or tris(2-hydroxyethyl)amine.
However, topical compositions containing an antibacterial active and a pharmaceutical carrier were already known and used for treating bacterial infections. In this regard, Perry discloses compositions (e.g., creams, gels, lotions) for topical use that contain antibacterial actives for ameliorating symptoms associated with bacterial infection such as acne and atopic dermatitis. See abstract; 0031,0088,0105. The compositions for the invention contain a mixture solvents. Examples of solvents include diethylene glycol monoethyl ether (i.e., the emollient and penetration enhancer instantly claimed), alcohol and water. See 0025. Trolamine is added as a neutralizing agent. See 0079. Multiple examples comprising trolamine (i.e., tris(2-hydroxyethyl)amine), acrylates/C10-30 alkyl acrylates and diethylene glycol monoethyl ether are taught. See Examples A-I. Staphylococcus aureus is a known bacteria involved in skin infections and causes atopic dermatitis. See 0015.
It would have been obvious to incorporate 5-methanesulfonylpentanenitrile or its 7-methanesulfonylheptanenitrile homologue into a topical composition such as those exemplified by Perry because Al-Gendy suggests that 5-methanesulfonylpentanenitrile (reads on instant Claim 8) and 7-methanesulfonylheptanenitrile (reads on instant Claim 2) have antimicrobial efficacy and Perry teaches that antibacterial agents can be incorporated into the topical compositions of their invention (e.g., gels, creams lotions – reads on instant Claims 3 and 9) wherein several of the exemplified compositions comprise diethylene glycol monoethyl ether (reads on instant Claims 4-5 and 10-11), tris(2-hydroxyethyl)amine) (reads on instant Claims 6 and 12), and acrylates/C10-30 alkyl acrylates (reads on instant Claims 6 and 12). Given that the 5-methanesulfonylpentanenitrile extract possesses anti-S. aureus (see Al-Gendy) activity and that the topical compositions can be used to treat conditions associated with S. aureus such as atopic dermatitis, the artisan would have further reasonably predicted that the topical pharmaceutical composition would contain the anti-S. aureus activity and may provide this activity as a benefit to treat atopic dermatitis, which is caused by S. aureus.
C. Claims 7 and 13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Al-Gendy et al. (“Glucosinolates, volatile constituents and biological activities of Erysimum corinthium Boiss. (Brassicaceae)” Food Chemistry. Volume 118, Issue 3, 1 February 2010, Pages 519–524) in view of Burch (US 3427387 A).
Claimed invention
Claim 7 limits Claim 2, wherein the compound has at least 90% (w/w) purity, and the composition is in an oral form of tablets or capsules.
Claim 13 limits Claim 9, wherein the compound has at least 90% (w/w) purity, and the composition is in an oral form of tablets or capsules.
Prior art
As outlined above, Al-Gendy suggests pharmaceutical compositions containing 5-methanesulfonylpentanenitrile or its homologue, 7-methanesulfonylheptanenitrile, and a pharmaceutical carrier for use to provide antibacterial efficacy. Al-Gendy further teaches all tested extracts showed inhibition of growth for the tested Gram-positive and Gram-negative bacteria and fungal organisms including, inter alia, S. aureus, S. faecalis, and E. coli, except A. flavus. See Table 3. See also Section 3.2. ‘Antimicrobial activity’.
While Al-Gendy suggests pharmaceutical compositions comprising a pharmaceutical carrier and 5-methanesulfonylpentanenitrile or 7-methanesulfonylheptanenitrile, Al-Gendy does not expressly teach specific formulations of oral compositions (e.g., tablet, capsule).
Burch teaches antibacterial compositions including ointments, which are for the skin, and tablets for oral delivery of antibacterial agents that are useful against Staphylococcus aureus or E. coli. See title; col. 1:30-52.
It would have been obvious to incorporate the 5-methanesulfonylpentanenitrile or its 7-methanesulfonylheptanenitrile homologue into an ointment for skin or tablet for oral delivery because Al-Gendy suggests that 5-methanesulfonylpentanenitrile (reads on instant Claim 8) and 7-methanesulfonylheptanenitrile (reads on instant Claim 2) have antimicrobial efficacy against bacteria and Burch teaches that antibacterial agents can be incorporated into the oral compositions (e.g., tablet – reads on instant Claims 7 and 13) or ointments (reads on instant Claims 3 and 9) of their invention. The artisan would have reasonably found it predictable that the composition containing 5-methanesulfonylpentanenitrile or 7-methanesulfonylheptanenitrile would provide antimicrobial activity.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 8,476,316. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims and the instant claims are drawn to pharmaceutical composition comprising a carrier and a purified n-methanesulfonylalkanenitrile that can be in the form of topical compositions (e.g., gels, creams, lotions, patches). The compositions contain diethylene glycol monoethylether, acrylates/C10-30 alkyl or tris(2-hydroxyethyl)amine. The utility of the compounds is treating inflammation and pain (see title of patent and instant application). The patented claims and the instant claims differ insofar as the patented claims are specifically drawn to 3-methanesulfonylpropionitrile whereas the instant claims are drawn to 5-methanesulfonylpentanenitrile and 7-methanesulfonylheptanenitrile. However, 3-methanesulfonylpropionitrile is a structurally similar homologue of 5-methanesulfonylpentanenitrile and 7-methanesulfonylheptanenitrile. It is well understood by chemists that the members of a homologous series of chemical compounds possess the similar principal characteristics; that generally the chemical and physical properties of the individual members vary gradually from member to member; and that knowledge of the properties and chemical behavior of one of the members of the series suggests to the chemist the properties and chemical behavior of the other members of the series. One of ordinary skill in the art would have found it obvious to use a structurally similar homologue of 3-methanesulfonylpropionitrile such as 5-methanesulfonylpentanenitrile and 7-methanesulfonylheptanenitrile with a reasonable expectation that 5-methanesulfonylpentanenitrile and 7-methanesulfonylheptanenitrile would provide at least some utility against pain and inflammation given that the patent teaches that 3-methanesulfonylpropionitrile possesses the same utility.
One of ordinary skill in the art would have found it obvious to adapt compositions for oral administration given that oral administration is a well-known and convenient route for delivering pharmaceutical agents. The artisan would have had a reasonable expectation that oral administration would deliver the drug to the body.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRIS E SIMMONS whose telephone number is (571)272-9065. The examiner can normally be reached M-F: 9:30-6:00p.
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CHRIS E. SIMMONS
Examiner
Art Unit 1622
/CHRIS E SIMMONS/Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622