DETAILED ACTION
Notice of Pre-AIA or AIA Status
The inventor or joint inventor should note that the instant invention, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 45-103 are pending in the instant invention. According to the Amendments to the Claims, filed July 31, 2023, claims 1-44 were cancelled and claims 45-103 were added.
Status of Priority
This invention is a 35 U.S.C. § 371 National Stage Filing of International Application No. PCT/US2022/014830, filed February 2, 2022, which claims priority under 35 U.S.C. § 119(e) to US Provisional Application No. 63/145,126, filed February 3, 2021.
Restrictions / Election of Species
PNG
media_image1.png
200
400
media_image1.png
Greyscale
The forthcoming first Office action and prosecution on the merits includes (1) claims 45-100, drawn to substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB), shown to the right, and/or a pharma-ceutical composition thereof; and (2) claims 101-103, drawn to a method of treating a condition which is modulated by Bruton’s tyrosine kinase (BTK) in a subject in need thereof, comprising administering… a substituted pyrazolo[3,4-d]pyrimidine of the Formula (IB), shown to the right above, respectively.
Thus, a second Office action and prosecution on the merits of claims 45-103 is contained within.
Specification Objection - Disclosure
The inventor or joint inventor is advised to format the specification according to 37 CFR 1.77(c). Revisions should particularly address bold-type, underline, and/or upper case formatting. Appropriate correction may be required.
Specification Objection - Title
The inventor or joint inventor is reminded of the proper content of the title of the invention.
The title of the invention should be brief, but technically accurate and descriptive and should contain fewer than 500 characters. See 37 CFR 1.72(a) and MPEP § 606.
The title of the invention is not technically accurate and descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. In the revised title, the examiner suggests identifying only the substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB).
The following title is suggested: SUBSTITUTED PYRAZOLO[3,4-d]PYRIMIDINES AS BRUTON’S TYROSINE KINASE (BTK) DEGRADERS.
Appropriate correction is required.
Specification Objection - Abstract
The inventor or joint inventor is reminded of the proper content of an abstract of the disclosure.
With regard particularly to chemical patents, for compounds or compositions, the general nature of the compound or composition should be given as well as the use thereof, e.g., The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics. Exemplification of a species could be illustrative of members of the class. For processes, the reactions, reagents and process conditions should be stated, generally illustrated by a single example, unless variations are necessary. See MPEP § 608.01(b), Section B.
The abstract of the disclosure is objected to because it fails to exemplify any members or formulae illustrative of its class. Correction is required. See MPEP § 608.01(b).
The examiner suggests incorporating the structure of Formula (IB) into the abstract, to overcome this objection.
Claim Objections
Claim 45 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(a) and/or 35 U.S.C. § 112(b), the existing recitation should be replaced with the following recitation:
A compound of Formula (IB):
PNG
media_image2.png
200
400
media_image2.png
Greyscale
(IB)
or a pharmaceutically acceptable salt, stereoisomer, deuterated isotope, or tautomer thereof,
wherein:
Y is CH or N;
each R2 is independently H, halogen, CN, C1-C5 alkyl, C1-C5 deuteroalkyl, C1-C5 haloalkyl, N(C1-C8 alkyl)2, OH, OC1-C5 alkyl, or OC1-C5 deuteroalkyl;
each R3 is independently H, halogen, CN, C1-C5 alkyl, C1-C5 deuteroalkyl, C1-C5 haloalkyl, N(C1-C8 alkyl)2, OH, OC1-C5 alkyl, or OC1-C5 deuteroalkyl;
R1 is H, halogen, CN, C1-C3 alkyl, C1-C3 haloalkyl, NH2, N(C1-C8 alkyl)2, OH, or OC1-C4 alkyl;
Q is L-W1 or L-W2;
L is C2-C12 alkylene, wherein one or more -CH2- groups is optionally and independently replaced by one or more atoms or groups independently selected from the group consisting of -C≡C-, -C(O)-, -C(O)NH-, -C(O)N(CH3)-, -C(O)N(CH2CH3)-, -NH-, -N(CH3)-, -N(CH2CH3)-, -S-, -S(O)-, -S(O)2-,
PNG
media_image3.png
200
400
media_image3.png
Greyscale
,
PNG
media_image4.png
200
400
media_image4.png
Greyscale
,
PNG
media_image5.png
200
400
media_image5.png
Greyscale
,
PNG
media_image6.png
200
400
media_image6.png
Greyscale
,
PNG
media_image7.png
200
400
media_image7.png
Greyscale
,
PNG
media_image8.png
200
400
media_image8.png
Greyscale
,
PNG
media_image9.png
200
400
media_image9.png
Greyscale
,
PNG
media_image10.png
200
400
media_image10.png
Greyscale
,
PNG
media_image11.png
200
400
media_image11.png
Greyscale
,
PNG
media_image12.png
200
400
media_image12.png
Greyscale
,
PNG
media_image13.png
200
400
media_image13.png
Greyscale
,
PNG
media_image14.png
200
400
media_image14.png
Greyscale
,
PNG
media_image15.png
200
400
media_image15.png
Greyscale
,
PNG
media_image16.png
200
400
media_image16.png
Greyscale
,
PNG
media_image17.png
200
400
media_image17.png
Greyscale
,
PNG
media_image18.png
200
400
media_image18.png
Greyscale
,
PNG
media_image19.png
200
400
media_image19.png
Greyscale
,
PNG
media_image20.png
200
400
media_image20.png
Greyscale
,
PNG
media_image21.png
200
400
media_image21.png
Greyscale
,
PNG
media_image22.png
200
400
media_image22.png
Greyscale
,
PNG
media_image23.png
200
400
media_image23.png
Greyscale
,
PNG
media_image24.png
200
400
media_image24.png
Greyscale
,
PNG
media_image25.png
200
400
media_image25.png
Greyscale
,
PNG
media_image26.png
200
400
media_image26.png
Greyscale
,
PNG
media_image27.png
200
400
media_image27.png
Greyscale
,
PNG
media_image28.png
200
400
media_image28.png
Greyscale
,
PNG
media_image29.png
200
400
media_image29.png
Greyscale
,
PNG
media_image30.png
200
400
media_image30.png
Greyscale
,
PNG
media_image31.png
200
400
media_image31.png
Greyscale
,
PNG
media_image32.png
200
400
media_image32.png
Greyscale
,
PNG
media_image33.png
200
400
media_image33.png
Greyscale
,
PNG
media_image34.png
200
400
media_image34.png
Greyscale
,
PNG
media_image35.png
200
400
media_image35.png
Greyscale
,
PNG
media_image36.png
200
400
media_image36.png
Greyscale
, or
PNG
media_image37.png
200
400
media_image37.png
Greyscale
;
W1 is:
PNG
media_image38.png
200
400
media_image38.png
Greyscale
,
PNG
media_image39.png
200
400
media_image39.png
Greyscale
,
PNG
media_image40.png
200
400
media_image40.png
Greyscale
,
PNG
media_image41.png
200
400
media_image41.png
Greyscale
,
PNG
media_image42.png
200
400
media_image42.png
Greyscale
,
PNG
media_image43.png
200
400
media_image43.png
Greyscale
,
PNG
media_image44.png
200
400
media_image44.png
Greyscale
,
PNG
media_image45.png
200
400
media_image45.png
Greyscale
,
PNG
media_image46.png
200
400
media_image46.png
Greyscale
,
PNG
media_image47.png
200
400
media_image47.png
Greyscale
,
PNG
media_image48.png
200
400
media_image48.png
Greyscale
,
PNG
media_image49.png
200
400
media_image49.png
Greyscale
,
PNG
media_image50.png
200
400
media_image50.png
Greyscale
,
PNG
media_image51.png
200
400
media_image51.png
Greyscale
,
PNG
media_image52.png
200
400
media_image52.png
Greyscale
,
PNG
media_image53.png
200
400
media_image53.png
Greyscale
,
PNG
media_image54.png
200
400
media_image54.png
Greyscale
, or
PNG
media_image55.png
200
400
media_image55.png
Greyscale
;
R4 is H, halogen, CN, C1-C5 alkyl, C1-C5 haloalkyl, or OC1-C5 alkyl;
W2 is:
absent,
PNG
media_image56.png
200
400
media_image56.png
Greyscale
,
PNG
media_image57.png
200
400
media_image57.png
Greyscale
, or
PNG
media_image58.png
200
400
media_image58.png
Greyscale
;
R5 is H, OCH3, or OCD3; and
X is CH or N.
Appropriate correction is required. See MPEP § 2173.02.
Claim 46 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(a), the existing recitation should be replaced with the following recitation:
The compound according to claim 45, or a pharmaceutically acceptable salt, stereoisomer, deuterated isotope, or tautomer thereof, wherein R1 is H, halogen, C1-C3 alkyl, or C1-C3 haloalkyl.
Appropriate correction is required. See MPEP § 2173.02.
Claim 47 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(a), the existing recitation should be replaced with the following recitation:
The compound according to claim 45, or a pharmaceutically acceptable salt, stereoisomer, deuterated isotope, or tautomer thereof, wherein R1 is H, F, Cl, Br, I, CH3, CH(CH3)2, or CF3.
Appropriate correction is required. See MPEP § 2173.02.
Claim 48 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(a), the existing recitation should be replaced with the following recitation:
The compound according to claim 45, or a pharmaceutically acceptable salt, stereoisomer, deuterated isotope, or tautomer thereof, wherein R1 is H, F, Cl, or Br.
Appropriate correction is required. See MPEP § 2173.02.
Claim 49 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(a), the existing recitation should be replaced with the following recitation:
The compound according to claim 45, or a pharmaceutically acceptable salt, stereoisomer, deuterated isotope, or tautomer thereof, wherein:
each R2 is independently H, halogen, C1-C4 alkyl, CD3, OC1-C4 alkyl, or OCD3; and
each R3 is independently H, halogen, C1-C4 alkyl, CD3, OC1-C4 alkyl, or OCD3.
Appropriate correction is required. See MPEP § 2173.02.
Claim 50 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(a), the existing recitation should be replaced with the following recitation:
The compound according to claim 45, or a pharmaceutically acceptable salt, stereoisomer, deuterated isotope, or tautomer thereof, wherein:
each R2 is independently H; and
each R3 is independently H.
Appropriate correction is required. See MPEP § 2173.02.
Claim 51 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(a), the existing recitation should be replaced with the following recitation:
The compound according to claim 45, or a pharmaceutically acceptable salt, stereoisomer, deuterated isotope, or tautomer thereof, wherein R4 is H, halogen, CN, or C1-C4 haloalkyl.
Appropriate correction is required. See MPEP § 2173.02.
Claim 52 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(a), the existing recitation should be replaced with the following recitation:
The compound according to claim 45, or a pharmaceutically acceptable salt, stereoisomer, deuterated isotope, or tautomer thereof, wherein R4 is H, F, Cl, Br, I, CN, or C1-C4 haloalkyl.
Appropriate correction is required. See MPEP § 2173.02.
Claim 53 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(a), the existing recitation should be replaced with the following recitation:
The compound according to claim 45, or a pharmaceutically acceptable salt, stereoisomer, deuterated isotope, or tautomer thereof, wherein R4 is H, F, CN, or C1-C4 haloalkyl.
Appropriate correction is required. See MPEP § 2173.02.
Claim 100 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(a), the existing recitation should be replaced with the following recitation:
A pharmaceutical composition comprising at least one pharmaceutically acceptable carrier, vehicle, or excipient and the compound according to claim 45, or a pharmaceutically acceptable salt, stereoisomer, deuterated isotope, or tautomer thereof.
Appropriate correction is required. See MPEP § 2173.02.
Claim 101 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(a) and/or 35 U.S.C. § 112(b), the existing recitation should be replaced with the following recitation (s):
101. A method for modulating Bruton’s tyrosine kinase (BTK) activity in a subject in need thereof, wherein the method comprises administering to the subject an effective amount of the compound according to claim 45, or a pharmaceutically acceptable salt, stereoisomer, deuterated isotope, or tautomer thereof.
110. A method for modulating Bruton’s tyrosine kinase (BTK) activity in a subject in need thereof, wherein the method comprises administering to the subject an effective amount of the pharmaceutical composition according to claim 100.
Appropriate correction is required. See MPEP § 2173.02.
Claim 102 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(a) and/or 35 U.S.C. § 112(b), the existing recitation should be replaced with the following recitation (s):
102. The method according to claim 101, wherein the subject has a condition modulated by Bruton’s tyrosine kinase (BTK) selected from the group consisting of an autoimmune disease, a cancer, an immunological disease, and an inflammatory disorder.
111. The method according to claim 110, wherein the subject has a condition modulated by Bruton’s tyrosine kinase (BTK) selected from the group consisting of an autoimmune disease, a cancer, an immunological disease, and an inflammatory disorder.
Appropriate correction is required. See MPEP § 2173.02.
Claim 103 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(a) and/or 35 U.S.C. § 112(b), the existing recitation should be replaced with the following recitation(s):
103. The method according to claim 102, wherein the autoimmune disease, cancer, immunological disease, or inflammatory disorder is selected from the group consisting of arthritis, bone metastasis, chronic graft versus host disease, Crohn’s disease, a disorder associated with renal transplant, inflammatory bowel disease, irritable bowel syndrome, lupus, multiple sclerosis, osteoporosis, and Sjogren’s syndrome.
104. The method according to claim 102, wherein the cancer is a B-cell malignancy or bone cancer.
105. The method according to claim 104, wherein the B-cell malignancy is selected from the group consisting of leukemia, lymphoma, and multiple myeloma.
106. The method according to claim 105, wherein the leukemia is chronic lymphocytic leukemia or hairy cell leukemia.
107. The method according to claim 105, wherein the lymphoma is selected from the group consisting of B-cell lymphoma, follicular lymphoma, mantle cell lymphoma, marginal zone lymphoma, non-Hodgkin lymphoma, and small lymphocytic lymphoma.
108. The method according to claim 107, wherein the B-cell lymphoma is diffuse large B cell lymphoma.
109. The method according to claim 107, wherein the non-Hodgkin lymphoma is B-cell non-Hodgkin lymphoma or Waldenström’s macroglobulinemia.
112. The method according to claim 111, wherein the autoimmune disease, cancer, immunological disease, or inflammatory disorder is selected from the group consisting of arthritis, bone metastasis, chronic graft versus host disease, Crohn’s disease, a disorder associated with renal transplant, inflammatory bowel disease, irritable bowel syndrome, lupus, multiple sclerosis, osteoporosis, and Sjogren’s syndrome.
113. The method according to claim 111, wherein the cancer is a B-cell malignancy or bone cancer.
114. The method according to claim 113, wherein the B-cell malignancy is selected from the group consisting of leukemia, lymphoma, and multiple myeloma.
115. The method according to claim 114, wherein the leukemia is chronic lymphocytic leukemia or hairy cell leukemia.
116. The method according to claim 114, wherein the lymphoma is selected from the group consisting of B-cell lymphoma, follicular lymphoma, mantle cell lymphoma, marginal zone lymphoma, non-Hodgkin lymphoma, and small lymphocytic lymphoma.
117. The method according to claim 116, wherein the B-cell lymphoma is diffuse large B cell lymphoma.
118. The method according to claim 116, wherein the non-Hodgkin lymphoma is B-cell non-Hodgkin lymphoma or Waldenström’s macroglobulinemia.
Appropriate correction is required. See MPEP § 2173.02.
Claim Rejections - 35 U.S.C. § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. § 112:
(a) IN GENERAL. The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Scope of Enablement - Hydrates of substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB)
Claim 45 is rejected under 35 U.S.C. § 112(a) because the specification, while being enabling for substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB), does not reasonably provide enablement for hydrates of substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB). The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. Hydrates of substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB), as recited in claim 45, have not been adequately enabled in the specification to allow any person having ordinary skill in the art, at the time this invention was made, to make and/or use hydrates of substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB).
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is undue. These factors include, but are not limited to: (a) breadth of the claims; (b) nature of the invention; (c) state of the prior art; (d) level of one of ordinary skill in the art; (e) level of predictability in the art; (f) amount of direction provided by the inventor or joint inventor; (g) existence of working examples; and (h) quantity of experimentation needed to make or use the invention based on the content of the disclosure. {See Ex parte Forman 230 USPQ 546 (Bd. Pat. App. & Inter. 1986); and In re Wands, 8 USPQ2d 1400 (Fed. Cir. 1988)}.
The above factors, regarding the instant invention, are summarized as follows:
PNG
media_image1.png
200
400
media_image1.png
Greyscale
(a) Breadth of the claims - the breadth of the claims includes substituted pyrazolo[3,4-d]-pyrimidines of the Formula (IB), shown to the right below, as well as the myriad of potential hydrates formulated from these substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB), shown to the right, respectively;
(b) Nature of the invention - the nature of the invention is evaluation of substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB), shown to the right above, and/or hydrates thereof, and the pharmacokinetic behavior of these substances as Bruton’s tyrosine kinase (BTK) degraders;
(c) State of the prior art - Nature Reviews: Drug Discovery offers a snapshot of the state of the drug development art. Herein, drug development is stated to follow the widely accepted Ehrlich model which includes: (1) development of a broad synthetic organic chemistry program; (2) subsequent testing of compounds in an appropriate laboratory model for the disease to be treated; and (3) screening of compounds with low toxicity in prospective clinical trials (Jordan, V. C. Nature Reviews: Drug Discovery, 2, 2003, 205). Moreover, US 11,530,222, as provided in the file and cited on the IDS, provides a synthesis of the instantly recited substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB) {Qian, et al. US 11,530,222, 2022};
(d) Level of one of ordinary skill in the art - the artisans synthesizing the inventor’s or joint inventor’s substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB), and/or hydrates thereof, would be a collaborative team of synthetic chemists and/or health practitioners, possessing commensurate degree level and/or skill in the art, as well as several years of professional experience;
(e) Level of predictability in the art - Synthetic organic chemistry is quite unpredictable (See In re Marzocchi and Horton 169 USPQ at 367 ¶3). Similarly, it is unclear based on the combination of the instant specification and Qian, et al. in US 11,530,222, as provided in the file and cited on the IDS, whether the instantly recited hydrates of substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB) are enabled. Moreover, the following excerpt is taken from Vippagunta, et al., with respect to the synthesis of hydrates of substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB) {Vippagunta, et al. Advanced Drug Delivery Reviews, 48, 2001, 18}:
Predicting the formation of solvates or hydrates of a compound and the number of molecules of water or solvent incorporated into the crystal lattice of a compound is complex and difficult. Each solid compound responds uniquely to the possible formation of solvates or hydrates and hence generalizations cannot be made for a series of related compounds. Certain molecular shapes and features favor the formation of crystals without solvent; these compounds tend to be stabilized by efficient packing of molecules in the crystal lattice, whereas other crystal forms are more stable in the presence of water and/or solvents. There may be too many possibilities so that no computer programs are currently available for predicting the crystal structures of hydrates and solvates.
(f) Amount of direction provided by the inventor - the invention lacks direction with respect to making and/or using hydrates of substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB);
(g) Existence of working examples - the inventor or joint inventor has provided sufficient guidance to make and/or use substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB); however, the disclosure is insufficient to allow extrapolation of the limited examples to enable the instantly recited hydrates of substituted pyrazolo[3,4-d]-pyrimidines of the Formula (IB). The specification lacks working examples of hydrates of substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB).
Within the specification, [A]t least one specific operative embodiment or example of the invention must be set forth. The example(s) and description should be of sufficient scope as to justify the scope of the claims. Markush claims must be provided with support in the disclosure for each member of the Markush group. Where the constitution and formula of a chemical compound is stated only as a probability or speculation, the disclosure is not sufficient to support claims identifying the compound by such composition or formula. See MPEP § 608.01(p) and MPEP § 2173.05.
PNG
media_image59.png
200
400
media_image59.png
Greyscale
(h) Quantity of experimentation needed to make or use the invention based on the content of the disclosure - predicting whether a recited compound, and/or a hydrate thereof, is in fact one that produces a desired physiological effect at a therapeutic concentration and with useful kinetics, is filled with experimental uncertainty, and without proper guidance, would involve a substantial amount of experimentation (Jordan, V. C. Nature Reviews: Drug Discovery, 2, 2003, 205-213). Similarly, the specification, as originally filed, including any references incorporated therein, fails to provide the necessary support required by 35 U.S.C. § 112(a) to enable the instantly recited hydrates of substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB). Thus, it is unclear, based on the guidance provided by the specification, whether a hydrate of a substituted pyrazolo[3,4-d]pyrimidine of the Formula (IB), such as (S)-N-(4-(4-amino-1-(4-(4-((4-(2-(2,6-dioxopiperidin-3-yl)-1-oxoisoindolin-5-yl)piperazin-1-yl)methyl)piperidin-1-yl)-3-fluorophenyl)-1H-pyrazolo[3,4-d]-pyrimidin-3-yl)benzyl)-5-fluoro-2-methoxybenzamide dihydrate, shown to the left above, is either synthetically feasible or possesses utility as a Bruton’s tyrosine kinase (BTK) degrader.
A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the invention was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. {See In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)}.
The determination that undue experimentation would have been needed to make and use the claimed invention is not a single, simple factual determination. Rather, it is a conclusion reached by weighing all the above noted factual considerations. (See In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404). These factual considerations are discussed comprehensively in MPEP § 2164.08 (scope or breadth of the claims), § 2164.05(a) (nature of the invention and state of the prior art), § 2164.05(b) (level of one of ordinary skill), § 2164.03 (level of predictability in the art and amount of direction provided by the inventor or joint inventor), § 2164.02 (the existence of working examples) and § 2164.06 (quantity of experimentation needed to make or use the invention based on the content of the disclosure).
Based on a preponderance of the evidence presented herein, the conclusion that the inventor or joint inventor is insufficiently enabled for making and/or using hydrates of substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB), is clearly justified.
The examiner suggests amending the claim, particularly as stated in the section above entitled Claim Objections, to overcome this section of the rejection.
Enablement - Method of treating a condition which is modulated by Bruton’s tyrosine kinase (BTK) in a subject in need thereof, comprising administering… a substituted pyrazolo[3,4-d]pyrimidine of the Formula (IB)
Claims 101-103 are rejected under 35 U.S.C. § 112(a) as failing to comply with the enablement requirement because the claims contain subject matter, particularly a method of treating a condition which is modulated by Bruton’s tyrosine kinase (BTK) in a subject in need thereof, comprising administering… a substituted pyrazolo[3,4-d]pyrimidine of the Formula (IB), which was not described in the specification in such a way as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use (perform) the invention commensurate in scope with these claims.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is undue. These factors include, but are not limited to: (a) breadth of the claims; (b) nature of the invention; (c) state of the prior art; (d) level of one of ordinary skill in the art; (e) level of predictability in the art; (f) amount of direction provided by the inventor or joint inventor; (g) existence of working examples; and (h) quantity of experimentation needed to make or use the invention based on the content of the disclosure. {See Ex parte Forman 230 USPQ 546 (Bd. Pat. App. & Inter. 1986); and In re Wands, 8 USPQ2d 1400 (Fed. Cir. 1988)}.
The above factors, regarding the present invention, are summarized as follows:
PNG
media_image1.png
200
400
media_image1.png
Greyscale
(a) Breadth of the claims - the breadth of the claims includes a method of treating a condition which is modulated by Bruton’s tyrosine kinase (BTK) in a subject in need thereof, comprising administering… a substituted pyrazolo[3,4-d]pyrimidine of the Formula (IB), shown to the right;
(b) Nature of the invention - the nature of the invention is performance of a method of treating a condition which is modulated by Bruton’s tyrosine kinase (BTK) in a subject in need thereof, comprising administering… a substituted pyrazolo[3,4-d]pyrimidine of the Formula (IB), shown to the right above;
(c) State of the prior art - Nature Reviews: Drug Discovery offers a snapshot of the state of the drug development art. Herein, drug development is stated to follow the widely accepted Ehrlich model which includes: (1) development of a broad synthetic organic chemistry program; (2) subsequent testing of compounds in an appropriate laboratory model for the disease to be treated; and (3) screening of compounds with low toxicity in prospective clinical trials (Jordan, V. C. Nature Reviews: Drug Discovery, 2, 2003, 205). Similarly, no single drug has been discovered that is effective in treating the myriad of conditions which are modulated by Bruton’s tyrosine kinase (BTK) in a subject, including, but not limited to, an autoimmune disease, a cancer, an immune-logical disease, and/or an inflammatory disorder {See In re Hokum, 226 USPQ 353 (ComrPats 1985)}. Moreover, US 11,530,222, as provided in the file and cited on the IDS, illustrates the synthesis of substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB), and/or methods of use thereof {Qian, et al. US 11,530,222, 2022};
(d) Level of one of ordinary skill in the art - the artisans performing the inventor’s or joint inventor’s method of treating a condition which is modulated by Bruton’s tyrosine kinase (BTK) in a subject in need thereof, comprising administering… a substituted pyrazolo[3,4-d]pyrimidine of the Formula (IB) would be a collaborative team of synthetic chemists and/or health practitioners, possessing commensurate degree level and/or skill in the art, as well as several years of professional experience;
(e) Level of predictability in the art - Synthetic organic chemistry is quite unpredictable (See In re Marzocchi and Horton 169 USPQ at 367 ¶3). Similarly, it is well established that [T]he scope of enablement varies inversely with the degree of unpredictability of the factors involved, and physiological activity is generally considered to be an unpredictable factor {See In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970)}.
Moreover, the following excerpt is taken from Hackam, et al., with respect to the poor replication of animal research in human clinical trials {Hackam, et al. JAMA, 296(14), 2006, 1731-1732}:
Only about a third of highly cited animal research translated at the level of human randomized trials. This rate of translation is lower than the recently estimated 44% replication rate for highly cited human studies. Nevertheless, we believe these findings have important implications. First, patients and physicians should remain cautious about extrapolating the findings of prominent animal research to the care of human disease. Second, major opportunities for improving study design and methodological quality are available for preclinical research. Finally, poor replication of even high-quality animal studies should be expected by those who conduct clinical research.
(f) Amount of direction provided by the inventor - the invention lacks direction with respect to making and/or using (performing) a method of treating a condition which is modulated by Bruton’s tyrosine kinase (BTK) in a subject in need thereof, comprising administering… a substituted pyrazolo[3,4-d]pyrimidine of the Formula (IB);
(g) Existence of working examples - the disclosure is insufficient to allow extrapolation of the limited examples to enable performing the instantly recited method of treating a condition which is modulated by Bruton’s tyrosine kinase (BTK) in a subject in need thereof, comprising administering… a substituted pyrazolo[3,4-d]pyrimidine of the Formula (IB).
Similarly, according to the specification, substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB) are capable of treating a variety of conditions which are modulated by Bruton’s tyrosine kinase (BTK) in a subject, including, but not limited to, an autoimmune disease, a cancer, an immunological disease, and/or an inflammatory disorder; however, the specification fails to set forth any convincing in vitro and/or in vivo assays corroborating the alleged activity in association with any conditions which are modulated by Bruton’s tyrosine kinase (BTK) in a subject, including, but not limited to, an autoimmune disease, a cancer, an immunological disease, and/or an inflammatory disorder. There is insufficient disclosure to reasonably conclude that the method of treating a condition which is modulated by Bruton’s tyrosine kinase (BTK) in a subject in need thereof, comprising administering… a substituted pyrazolo[3,4-d]pyrimidine of the Formula (IB), as recited, would contribute to treatment of any conditions which are modulated by Bruton’s tyrosine kinase (BTK) in a subject, including, but not limited to, an autoimmune disease, a cancer, an immunological disease, and/or an inflammatory disorder. Furthermore, the combination of the instant specification and Qian, et al. in US 11,530,222, as provided in the file and cited on the IDS, lacks adequate credible evidence to support the assertion that a method of treating a condition which is modulated by Bruton’s tyrosine kinase (BTK) in a subject in need thereof, comprising administering… a substituted pyrazolo[3,4-d]pyrimidine of the Formula (IB), as recited, would contribute to the prophylaxis of any conditions which are modulated by Bruton’s tyrosine kinase (BTK) in a subject, including, but not limited to, an autoimmune disease, a cancer, an immunological disease, and/or an inflammatory disorder, since the inventor or joint inventor has neither provided convincing data for any patient population, nor indicated any art recognized correlation between the disclosed data and the breadth of the claims.
Within the specification, [A]t least one specific operative embodiment or example of the invention must be set forth. The example(s) and description should be of sufficient scope as to justify the scope of the claims. Markush claims must be provided with support in the disclosure for each member of the Markush group. Where the constitution and formula of a chemical compound is stated only as a probability or speculation, the disclosure is not sufficient to support claims identifying the compound by such composition or formula. See MPEP § 608.01(p) and MPEP § 2173.05.
PNG
media_image60.png
200
400
media_image60.png
Greyscale
(h) Quantity of experimentation needed to make and/or use (perform) the invention based on the content of the disclosure - predicting whether a recited compound is in fact one that produces a desired physiological effect at a therapeutic concentration and with useful kinetics, is filled with experimental uncertainty, and without proper guidance, would involve a substantial amount of experimentation (Jordan, V. C. Nature Reviews: Drug Discovery, 2, 2003, 205-213). Furthermore, it is unclear, based on the guidance provided by the specification, whether a substituted pyrazolo-[3,4-d]pyrimidine of the Formula (IB), such as (S)-N-(4-(4-amino-1-(4-(4-((4-(2-(2,6-dioxopiperidin-3-yl)-1-oxoisoindolin-5-yl)piperazin-1-yl)methyl)piperidin-1-yl)-3-fluorophenyl)-1H-pyrazolo[3,4-d]pyrimidin-3-yl)benzyl)-5-fluoro-2-methoxybenzamide, shown to the left above, possesses utility as a therapeutic agent, useful in a method of treating a condition which is modulated by Bruton’s tyrosine kinase (BTK) in a subject in need thereof, comprising administering… a substituted pyrazolo[3,4-d]pyrimidine of the Formula (IB). Thus, one of ordinary skill in the art, at the time this invention was made, would have an unreasonable expectation of success and undue experimentation in transferring the in vitro and/or in vivo method of treating a condition which is modulated by Bruton’s tyrosine kinase (BTK) in a subject in need thereof, comprising administering… a substituted pyrazolo[3,4-d]pyrimidine of the Formula (IB), wherein the condition which is modulated by Bruton’s tyrosine kinase (BTK) in a subject, includes, but is not limited to, an autoimmune disease, a cancer, an immunological disease, and/or an inflammatory disorder, to any subject population.
A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the invention was filed, would not have taught one skilled in the art how to make and/or use (perform) the full scope of the claimed invention without undue experimentation. {See In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)}.
The determination that undue experimentation would have been needed to make and use the claimed invention is not a single, simple factual determination. Rather, it is a conclusion reached by weighing all the above noted factual considerations. (See In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404). These factual considerations are discussed comprehensively in MPEP § 2164.08 (scope or breadth of the claims), § 2164.05(a) (nature of the invention and state of the prior art), § 2164.05(b) (level of one of ordinary skill), § 2164.03 (level of predictability in the art and amount of direction provided by the inventor or joint inventor), § 2164.02 (the existence of working examples) and § 2164.06 (quantity of experimentation needed to make or use the invention based on the content of the disclosure).
Based on a preponderance of the evidence presented herein, the conclusion that the inventor or joint inventor is insufficiently enabled for making and/or using (performing) a method of treating a condition which is modulated by Bruton’s tyrosine kinase (BTK) in a subject in need thereof, comprising administering… a substituted pyrazolo[3,4-d]pyrimidine of the Formula (IB) is clearly justified.
The examiner suggests amending the claims, particularly as stated in the section above entitled Claim Objections, to overcome this section of the rejection.
Claim Rejections - 35 U.S.C. § 112(b)
The following is a quotation of the second paragraph of 35 U.S.C. § 112:
(b) CONCLUSION. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or joint inventor regards as the invention.
Claim 101 is rejected under 35 U.S.C. § 112(b) as being indefinite for failing to set forth the subject matter which the inventor or joint inventor regards as the invention.
The inventor or joint inventor should note that claim 101 is a reach-through claim. The claim attempts to obtain protection for subject matter that is prophetic and/or has yet to be invented. Similarly, the metes and bounds of the treatable conditions which are modulated by Bruton’s tyrosine kinase (BTK) in a subject are not defined by the claim, the specification does not provide an adequate standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the invention. Likewise, the specification, on page 4, uses open language, such as chosen from, to define treatable conditions which are modulated by Bruton’s tyrosine kinase (BTK) in a subject as an autoimmune disease, a cancer, an immunological disease, and/or an inflammatory disorder; however, neither the specification, nor the claim, explicitly limits the invention to any specifically disclosed or recited embodiments, including, but not limited to, an autoimmune disease, a cancer, an immunological disease, and/or an inflammatory disorder. Consequently, the method of treating a condition which is modulated by Bruton’s tyrosine kinase (BTK) in a subject in need thereof, comprising administering… a substituted pyrazolo[3,4-d]pyrimidine of the Formula (IB) has been rendered indefinite by the use of the reach-through protocol.
The examiner suggests amending the claim, particularly as stated in the section above entitled Claim Objections, to overcome this rejection.
Claim 102 is rejected under 35 U.S.C. § 112(b) as being indefinite for failing to set forth the subject matter which the inventor or joint inventor regards as the invention.
The inventor or joint inventor should note that a broad limitation together with a narrow limitation that falls within the broad limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c), MPEP § 2173.05(h), and/or Eli Lilly & Co. v. Teva Parenteral Meds., 845 F.3d 1357, 1371, 121 USPQ2d 1277, 1287 (Fed. Cir. 2017).
Similarly, the inventor or joint inventor should further note that claim 102 recites the broad limitation, cancer, and the claim also recites leukemia and lymphoma, respectively, which are the narrower statements of the limitation.
Likewise, the inventor or joint inventor should further note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), pertaining to where broad language is followed by such as and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and consequently, not required, or (b) a required feature of the claim.
Moreover, the inventor or joint inventor should further note the explanation given by the Board of Patent Appeals and Interferences in the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
The examiner suggests amending the claim, particularly as stated in the section above entitled Claim Objections, to overcome this rejection.
Claim 103 is rejected under 35 U.S.C. § 112(b) as being indefinite for failing to set forth the subject matter which the inventor or joint inventor regards as the invention.
The inventor or joint inventor should note that a broad limitation together with a narrow limitation that falls within the broad limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c), MPEP § 2173.05(h), and/or Eli Lilly & Co. v. Teva Parenteral Meds., 845 F.3d 1357, 1371, 121 USPQ2d 1277, 1287 (Fed. Cir. 2017).
Similarly, the inventor or joint inventor should further note that claim 103 recites the broad limitations, (1) B-cell malignancy; (2) B-cell lymphoma; and (3) non-Hodgkin lymphoma, respectively, and the claim also recites (1) B-cell lymphoma, chronic lymphocytic leukemia, follicular lymphoma, hairy cell leukemia, mantle cell lymphoma, marginal zone lymphoma, non-Hodgkin lymphoma, and small lymphocytic lymphoma; (2) diffuse large B-cell lymphoma; and (3) B-cell non-Hodgkin lymphoma, respectively, which are the narrower statements of the limitations.
Likewise, the inventor or joint inventor should further note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), pertaining to where broad language is followed by such as and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and consequently, not required, or (b) a required feature of the claim.
Moreover, the inventor or joint inventor should further note the explanation given by the Board of Patent Appeals and Interferences in the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949).
The examiner suggests amending the claim, particularly as stated in the section above entitled Claim Objections, to overcome this rejection.
Claim Rejections - Obviousness-type 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 obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined invention claim is not patentably distinct from the reference claims because the examined invention claim is either anticipated by, or would have been obvious over, the reference claims. {See 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); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969)}.
Consequently, claims 45-103 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 1-24, 27 and 28 of US Patent No. 11,530,222. Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 1 in US 11,530,222 recites substituted pyrazolo[3,4-d]pyrimidines of the Formula (I),
PNG
media_image61.png
200
400
media_image61.png
Greyscale
PNG
media_image62.png
200
400
media_image62.png
Greyscale
where Y = CH; R2 = -OCH3; R3’ = -F; A = -C(O)NH-C1-C5 alkylene-; R1 = -H; B’ is shown to the left above; Q = -L-W1-; L = -arylene-; W1 is shown to the right above; and X = CH, respectively, which provide
PNG
media_image61.png
200
400
media_image61.png
Greyscale
overlapping subject matter with respect to the instantly recited substituted pyrazolo[3,4-d]pyrimidines of the Formula (IB), where Y = CH; R2 = -OCH3; R3’ = -F; R1 = -H; Q = -L-W1-; L = -1,4-phenylene-; W1 is shown to the left; and X = CH, respectively.
The inventor or joint inventor should note that [T]he discovery of a previously unappreciated property of a prior art compound, or of a scientific explanation for the prior art’s functioning, does not render the old compound patentably new to the discoverer. {See Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999)}.
Similarly, the inventor or joint inventor should further note that [T]he claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. {See In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977); and In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004)}.
Likewise, the inventor or joint inventor should note that [W]hen the claim recites using an old compound and the use is directed to a result or property of that compound, then the claim is anticipated. {See In re May, 574 F.2d 1082, 1090, 197 USPQ 601, 607 (CCPA 1978); and In re Tomlinson, 363 F.2d 928, 150 USPQ 623 (CCPA 1966)}.
Next, the inventor or joint inventor should further note that [P]roducts of identical chemical composition may not have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties the inventor or joint inventor discloses and/or claims are necessarily present. {See In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)}.
Then, the inventor or joint inventor should further note that a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 37 CFR 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground, provided the conflicting invention or patent either is shown to be commonly owned with this invention, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Moreover, the inventor or joint inventor should further note that the USPTO internet Web site contains terminal disclaimer forms which may be used, and the inventor or joint inventor is encouraged to visit http://www.uspto.gov/forms/, where (i) the filing date of the invention will determine what form should be used, and (ii) a web-based eTerminal Disclaimer may be filled out completely online using web-screens, respectively.
Also, the inventor or joint inventor should further note that an eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission.
Finally, for more information about eTerminal Disclaimers, the inventor or joint inventor should refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Allowable Subject Matter
No claims are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS M. WILLIS, whose telephone number is 571-270-5757. The examiner may normally be reached on Monday thru Thursday from 8:00-6:00 EST. The examiner is also available on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Jeffrey Murray, may be reached on 571-272-9023. The fax phone number for the organization where this invention or proceeding is assigned is 571-273-8300.
Information regarding the status of an invention may be obtained from Patent Center. For more information about Patent Center, see https://www.uspto.gov/patents/apply/patent-center. Should you have questions on access to Patent Center, contact the Patent Electronic Business Center (PEBC) at 866-217-9197 (toll-free) or ebc@uspto.gov.
/DOUGLAS M WILLIS/
Primary Examiner, Art Unit 1624