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 the Claims
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. Claims must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claims 22 (i.e. “A method according to claim 20…” ) and 22 (“A method according to claim 12…” ) have been renumbered 22a and 22b, respectively, solely for the purposes of expediting prosecution. Appropriate correction for these and all subsequent claim numbering is required.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Russia on January 18th 2023. 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 listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claim 31 is objected to because of the following informalities: “prepared in the dosage form of a solution for subcutaneous injection” is wordy and uses passive voice. Examiner recommends amending the claim to “…wherein the product is in liquid dosage form for subcutaneous injection”
Claim Rejections - 35 USC § 112(b)
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 1-31 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 1-31 are rejected as indefinite because there are multiple interpretations of the peptide structure based on the way it is recited by the claims, as shown in the image below. There are no drawings or detail within the disclosure to differentiate which structure the claims recite. For the purposes of examination and based on the specification, the structure will be interpretated to be the same as peptide disclosed in Kosorukov et al. WO 2017/180064 A1 (hereafter Kosorukov I). Applicant is reminded that amendments to address this rejection cannot introduce new matter into the specification or claims.
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Claims 2, 7, 13, and 21 are rejected as indefinite for “early postoperative period” because “early” is a relative term that is not defined by the specification. The specification has not provided a quantifiable measure for what the “early postoperative period” is and therefore the metes and bounds of the claim are unclear.
Claims 4, 6, 7, and 14 are rejected for lack of antecedent basis of “the patient”. For the purposes of claim examination, claim 1 will be interpreted as “administering the tetrapeptide… to patients…” to provide antecedent basis for claims 4, 6, and 7. Claim 12 will be interpreted as “administering the tetrapeptide… to patients…” to provide antecedent basis for claim 14.
Claims 4, 10, 14, 18, 22a, and 25 are rejected as indefinite for “as necessary” because two individuals could disagree on when pain relief is necessary because pain is subjective. There is no objective threshold in the specification to determine when administration is necessary and therefore the metes and bounds of the claim are indefinite.
Claim 6 is rejected as indefinite for reciting “a pause of at least 2-5 days” which recites a broader range (i.e. at least 2 days) and a narrower range (i.e. at least 5 days) within the same claim. The metes and bounds of the claim are not clearly set forth because it is unclear what minimum pause length the claim requires. See MPEP 2173.05(c).
Claim 12 is rejected as indefinite for “controlling pain” which is not defined in the specification. It is unclear how “controlling pain” differs from “treating pain” as recited in Claim 1. Therefore, the metes and bounds of the claim are unclear. For the purposes of examination, “controlling pain” will be interpreted as the same as “treating pain”.
Claims 1, 12, 15, 20, and 22b are rejected as indefinite for reciting “which includes” because it is unclear if the transitional phrase is limiting. For the purposes of examination, “which includes” will be interpreted as “comprising.”
Claim 21 is rejected as indefinite for “when there is risk of an attack of pain in cancer patients” because the specification has not provided a quantifiable threshold for “risk”. For the purposes of examination, this phrase will be interpreted as “administered to cancer patients”.
Claim 23 is rejected as indefinite for “is used” because the metes and bounds of how the peptide can be used is unclear. For example, the recited dosage could be used to make a dilution and then administered to the subject. For the purposes of examination, “used” will be interpreted as “administered”.
Claim 25 is rejected as indefinite for “in line with”. It is unclear what this means. For the purposes of claim interpretation, claim 25 will be interpreted as “…wherein the single dose is increased or decreased by 25-50% relative to the previous value.”
Claims 27-30 are rejected as indefinite because they recite the components of a medicinal product by their weight percentage or by ratio, but lists acetic acid without a quantitative amount. Instead, it states “up to a PH of 4.0 - 6.0”. For the purposes of examination, this claim will be interpreted as the overall medicinal composition having up to a pH 4.0 - 6.0, but that the composition does not require any amount of acetic acid specifically. In addition, for the purposes of claim interpretation, weight percentage (wt %) will be interpreted as the mass of a component divided by the total mass of the mixture, multiplied by 100.
Claim 27 is rejected for lacking antecedent basis for “medicinal product” in Claim 1. For the purposes of examination, Claim 1 will be interpreted as “…administering a composition comprising the tetrapeptide…” to provide antecedent basis for claim 27.
Claims 28-30 are rejected as indefinite for reciting a product “that is characterized by” various components. It is unclear what this means. For the purposes of examination, “that is characterized by” will be interpreted as a “comprising”.
Claims 29 and 30 are rejected as indefinite because they recite a ratio of components with a milligram unit. This claim language is unclear because part-to-whole ratios do not have units by definition. The claim language will be interpreted as reciting the mass per volume in mg/mL, as is standard in the art. Therefore, claims 29 and 30 will be interpreted as a composition diluted with a water solvent to a dosage of 1 mL, where the other components of the composition are in mg/mL. For the purposes of examination, 1 wt % equates to 10mg/mL. For example, 0.38 wt % of tetrapeptide is the same as 3.8 mg/mL of tetrapeptide. Furthermore, a composition that has a solvent has up to 100 wt % is equivalent to a composition diluted with a water solvent to a dosage of 1 mL. Conversion between units where the components are otherwise the same will not be examined as a limitation. In other words, the same art that applies to claim 27 can apply to claim 29, and the same art that applies to claim 28 can apply to claim 30.
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 29 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.
Based on the claim interpretation outlined previously, Claim 29, which depends from Claim 27, recites the same components of the medicinal product and the same relative amounts of each component, but in mg/mL instead of wt %. The conversion between units is not a limitation. Therefore, it fails to further limit the scope of Claim 27.
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.
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.
Claims 1-26 are rejected under 35 U.S.C. 103 as being unpatentable over Kosorukov I, as evidenced by Nair, A simple practice guide for dose conversion between animals and human, 2016, Journal of Basic and Clinical Pharmacy, pgs. 27-21 (hereafter Nair).
The claims recite a method of treating, controlling, and preventing pain by administering the tetrapeptide Tyrosyl-D-arginyl-phenylalanyl-glycinamide (H-Tyr-D-Arg-Phe-Gly-NH2). Specifically, the claims recite a single dosage of 2 to 7mg, for a daily dose not exceeding 42 mg, with a dosing interval of 4 hours or more and a treatment course of up to 96 days. Claims 2, 13, and 21 further limit that the tetrapeptide is administered for pain or the risk of pain in cancer patients. Claims 3, 15, and 22b further limit that the peptide is administered via a subcutaneous injection. Claims 4, 10, 14, 18, 22a, and 25 further limit that the severity of the pain is monitored and that the single dose is increased or decreased by 25-50% relative to the previous value. Claim 5 further limits that tetrapeptide injections are performed daily. Claims 6 and 7 further limit that the total duration of the treatment is determined by the patient’s condition. Claims 8, 9, 11, 16, 17, 19, 23, 24 and 26 further limit the dose to 4 mg 2-3 times daily.
Kosorukov I teaches a method of treating, controlling, (pg. 43, under section “Patient 2”) and preventing (pg. 48, line 1) pain by administering a single dose of up to 3 mg of the tetrapeptide H-Tyr-D-Arg-Phe-Gly-NH2 to cancer patients via subcutaneous injection (pg. 42, line 8) for a daily dose not exceeding 42 mg, and a duration of treatment course up to 96 days (pg. 43, under section “Patient 2”). It also teaches that the severity of the pain is monitored and that the dose is decreased 25% relative to the previous value (pg. 43, under section “Patient 2”). It also teaches that the injections are performed daily. For example, Patient 3 had a dose administered twice a day for four days (pg. 43, under section “Patient 3”). It also teaches that the total duration of treatment is determined by the patient’s condition; for example, Patient 2’s treatment duration was extended with each new dose throughout the day and over the course of several days, based on her condition, namely screaming and inability to care for herself without medication. It specifically states that the analgesic effect lasts 6-12 hours (pg. 43, line 24). Kosorukov I also teaches studies in mice that elucidate effects of the peptide. For example, it teaches that chronic administration does not result in tolerance or withdrawal (pg. 38, last paragraph). It also teaches that the effect of the peptide was dose dependent but does not demonstrate evidence of criticality (pgs. 31-32 and Table 3); one of the doses in this experiment was 1 mg/kg which, as evidenced by Nair, which is the human equivalent dose (HED) of roughly 4.3 mg:
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Furthermore, a 1 mg/kg dose resulted in 94.6% of the maximum possible effect. In other words, while Kosorukov I does not explicitly teach a 4 mg dose administered to a subject, it does teach administration of a dose to mice that is roughly equivalent to a 4 mg dose for humans and that this dose was extremely successful compared to morphine.
Kosorukov I does not explicitly teach three things. First, it does not explicitly state that the dosing interval is 4 hours or more. Second, it does not teach the recommended starting single dose is 4 mg. Third, while it teaches administration of the tetrapeptide 2-3 times daily at a 3 mg dose, it does not teach administration 2-3 times daily at a 4 mg dose. The 1 mg/kg dose administered to mice, which was roughly equivalent to a 4 mg dose for humans, was only administered once.
The three limitations that were not explicitly taught by Kosorukov I would have been obvious variables for one of ordinary skill in the art to optimize. Regarding the first limitation, while Kosorukov I does not explicitly state the dosing interval is 4 hours or more, it would be obvious to administer the next dose after the analgesic effect has worn off, which is more than 4 hours. Furthermore, it would be routine to optimize the precise time interval needed between dosages because duration of pain relief is a result effective variable (pg. 37 lines 4-8); in other words, since the duration of pain relief varies, it would be routine to determine the optimal dosing scheduling. Regarding the second limitation, it would be routine to optimize the recommended starting single dose. Kosorukov I teaches that the starting dosage was a result effect variable because different patients start at different dosages (pg. 43). In addition, Kosorukov I provides explicit motivation for changing the recommended dose for humans “depending on the nature of the pain” (pg. 41). Regarding the third limitation, it would have been obvious to administer a 4 mg dose 2-3 times daily for effective pain relief, because subjects were already treated with a 3 mg/dose 2-3 times daily, and Kosorukov I teaches that the recommended human dose is up to 10 mg/dose. Furthermore, one would have a reasonable expectation of success of increasing the dose to 4 mg, because the closest HED to 4 mg tested in mice was over 94% effective. Therefore, these limitations would have been obvious to one of ordinary skill in the art.
The principle of law states from MPEP §§ 2144.05: "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages," (see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382). Generally, 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," (See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Claim(s) 27-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 10,357,533 (hereafter Kosorukov II) in view of Ataman Chemical, 2020, Sodium Acetate Trihydrate, pgs. 1-9 (hereafter Ataman Chemical) (see instant PTO-892).
Claims 27-28 recite a medicinal product with a pH of up to 4.0 – 6.0 and comprising the tetrapeptide H-Tyr-D-Arg-Phe-Gly-NH2 and excipients (in weight %): sodium acetate trihydrate (0.04), mannitol (0.50), sodium chloride (0.50), glycine (0.50), tetrapeptide (0.40), water (up to 100), and acetic acid (up to a pH of 4.0-6.0). Claim 31 further limits that the medicinal product of Claim 27 is in liquid form for subcutaneous injection. Claims 29-30 recite the same medicinal product components, but by mass per volume, instead of wt %.
Regarding claims 27-30 Kosorukov II teaches a tetrapeptide H-Tyr-D-Arg-Phe-Gly-NH2 composition, wherein the composition is in liquid dosage form for subcutaneous injection, comprising components as follows (in weight %): buffer (0.01-0.2), filler (0-6), stabilizer (0-4), the tetrapeptide (0.01-0.5), and a water solvent (up to 100) (Column 27, lines 50-60). It further teaches that the buffer can be sodium acetate, the filler can be mannitol, the stabilizers can be sodium chloride and glycine, the solvent can be water and that the composition has a pH up to 4.7 (Column 28, lines 1-25).
While Kosorukov II does not explicitly teach that the buffering additive is sodium acetate trihydrate, sodium acetate trihydrate would be present in the product taught by Kosorukov II because it would naturally form from the sodium acetate in the presence of the water solvent. However, this rejection is further supported by the teachings of Ataman Chemical below.
Ataman Chemical teaches that sodium acetate trihydrate can be used with acetic acid to maintain a buffer with a pH of 4-6 (pg. 2, “Buffer Solution” section). Ataman Chemical suggests sodium acetate trihydrate for use in a buffer. Ataman Chemical also teaches that is an electrolyte replenisher in medical applications.
It would be obvious to one of ordinary skill in the art to modify the sodium acetate ingredient in the composition taught by Kosorukov II to be sodium acetate trihydrate. One of ordinary skill in the art would be motivated to substitute sodium acetate to sodium acetate trihydrate because it acts as an electrolyte replenisher. There would be a reasonable expectation of success substituting one buffering agent for a functionally equivalent alternative.
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 1, 3, 12, 15, 20 and 22b are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of U.S. Patent No. 10,357,533 B2 (hereafter Kosorukov II) in view of Kosorukov I (see instant PTO-892).
The instant claims recite a tetrapeptide composition, namely Tyrosyl-D-arginyl-phenylalanyl-glycinamide (H-Tyr-D-Arg-Phe-Gly-NH2), and a method of treating, controlling, and preventing pain by administering the tetrapeptide. Specifically, the claims recite a dosage of 2 to 7mg, for a daily dose not exceeding 42 mg, with a dosing interval of 4 hours or more and a treatment course of up to 96 days. Claims 3, 15, and 22b further limit that the peptide is administered via a subcutaneous injection.
Claims 1 and 10 of Kosorukov II teach a tetrapeptide (H-Tyr-D-Arg-Phe-Gly-NH2) composition for preventing or treating pain administered via subcutaneous injection.
Kosorukov II does not recite the dosage of 2 to 7 mg, for a daily dose not exceeding 42 mg, with a dosing interval of 4 hours or more and a treatment course of up to 96 days.
Kosorukov I teaches a method of treating, controlling, (pg. 43, under section “Patient 2”) and preventing (pg. 48, line 1) pain by administering a single dose of up to 3 mg of the tetrapeptide H-Tyr-D-Arg-Phe-Gly-NH2 for a daily dose not exceeding 42 mg, and a duration of treatment course up to 96 days (pg. 43, under section “Patient 2”). While Kosorukov I does not explicitly state the dosing interval is 4 hours or more, it would be obvious to administer the next dose after the analgesic effect has worn off, which is more than 4 hours. Furthermore, it would be routine to optimize the precise time interval needed between dosages because duration of pain relief is a result effective variable (pg. 37 lines 4-8). Therefore, it would be obvious to one of ordinary skill in the art that the limitations recited in instant claims 1, 3, 12, 15, 20 and 22b are patentably indistinct from claims 1 and 10 of Kosorukov II.
Claims 27-31 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 5, 7, 8, 10, and 13 of U.S. Patent No. 10,357,533 B2 (hereafter Kosorukov II) in view of Ataman Chemical (see instant PTO-892). Although the claims at issue are not identical, they are not patentably distinct from each other.
Instant Claims 27-30 recite a medicinal product comprising the tetrapeptide and excipients (in weight %): sodium acetate trihydrate (0.04), mannitol (0.50), sodium chloride (0.50), glycine (0.50), tetrapeptide (0.40), water (up to 100), and acetic acid (up to a pH of 4.0-6.0). Claim 31 further limits that the medicinal product of Claim 27 is in liquid form for subcutaneous injection. Claims 29-30 recite the same medicinal product components, but by mass per volume, instead of wt %.
Claims 1, 2, 3, 5, 7, 8, 10, and 13 of Kosorukov II teach all the limitations of the instant claims, except that the buffer can be sodium acetate trihydrate.
While Kosorukov II does not explicitly teach that the buffering additive is sodium acetate trihydrate, sodium acetate trihydrate would be present in the product taught by Kosorukov II because it would naturally form from the sodium acetate in the presence of the water solvent. However, this rejection is further supported by the teachings of Ataman Chemical below.
Ataman Chemical teaches that sodium acetate trihydrate can be used with acetic acid to maintain a buffer with a pH of 4-6 (pg. 2, “Buffer Solution” section). Ataman Chemical suggests sodium acetate trihydrate for use in a buffer. Ataman Chemical also teaches that is an electrolyte replenisher in medical applications (pg. 3, section 5).
It would be obvious to one of ordinary skill in the art to modify the sodium acetate in the composition taught by Kosorukov II to be sodium acetate trihydrate. One of ordinary skill in the art would be motivated to substitute sodium acetate to sodium acetate trihydrate because it acts as an electrolyte replenisher. There would be a reasonable expectation of success substituting one buffering agent for a functionally equivalent alternative.
Given the state of the art at the time of filing, using sodium acetate trihydrate as the buffer ingredient instead of sodium acetate anhydrous is not a patentably distinct limitation.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE C BUCCINI whose telephone number is (571)272-1352. The examiner can normally be reached M-F 7:30-5 EST.
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/MICHELLE CALLAHAN BUCCINI/Examiner, Art Unit 1675
/JEFFREY STUCKER/Supervisory Patent Examiner, Art Unit 1675