Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Priority and Status of Claims
1. This application is a 371 of PCT/US2022/014757 2/01/2022, which claims benefit of the provisional application 63144242 with a filing date 2/01/2021.
2. Claims 1-9, 23-28, 37, 40 and 42 are pending in the application.
Claim Rejections - 35 USC § 112
3. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(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.
Claims 1-9, 23-28, 37, 40 and 42 are rejected under 35 U.S.C. 112(a) or 112 first paragraph (pre-AIA ), because the specification does not reasonably provide enablement of “ocular disorder” without limitation (i.e., no named ocular disorder), see claims 1, 23 and 37. 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 the invention commensurate in scope with these claims.
ln In re Wands, 8 USPQ2d 1400 (1988), factors to be considered in determining
whether a disclosure meets the enablement requirement of 35 U.S.C. 112, first
paragraph, have been described. They are:
1. the nature of the invention,
2. the state of the prior art,
3. the predictability or Iack thereof in the art,
4. the amount of direction or guidance present,
5. the presence or absence of working examples,
6. the breadth of the claims,
7. the quantity of experimentation needed, and
8. the level of the skill in the art.
In the instant case:
The nature of the invention
The nature of the invention of claims 1-9, 23-28, 37, 40 and 42 is drawn to intent methods of use for treating ocular disorder without limitation (i.e., no named ocular disorder).
The state of the prior art and the predictability or lack thereof in the art
The state of the prior art is that the pharmacological art involves screening in
vitro and in vivo to determine which compound iloperidone exhibit the desired pharmacological activities (i.e., what compound iloperidone can treat which specific diseases by what mechanism). There is no absolute predictability even in view of the seemingly high Ievel of skill in the art. The existence of these obstacles establishes that the contemporary knowledge in the art would prevent one of ordinary skill in the art from accepting any therapeutic regimen on its face. The prior art is Whitcup et al. WO 2019226864, it discloses a similar compound/composition for treating ocular hyperemia,
see page 16.
The instant claimed invention is highly unpredictable as discussed below:
It is noted that the pharmaceutical art is unpredictable, requiring each
embodiment to be individually assessed for physiological activity. In re Fisher, 427 F.2d 833,166 USPQ 18 (CCPA 1970) indicates that the more unpredictable an area is, the more specific enablement is necessary in order to satisfy the statute.
Applicants are claiming intent methods of use using the instant compounds
Of formula (I) for treating “ocular disorder” without limitation (i.e., no named ocular disorder). As such, the specification fails to enable the skilled artisan to use the instant compounds for treating “ocular disorder” without limitation (i.e., no named ocular disorder). In addition, there is no established correlation between in vitro or in vivo activity and accomplishing “ocular disorder” without limitation (i.e., no named ocular disorder), and those skilled in the art would not accept allegations in the instant specification to be reliable predictors of success, and those skilled in the art would not be able to use the instant compounds since there is no description of an actual method “ocular disorder” without limitation (i.e., no named ocular disorder) in a host is treated.
Hence, one of skill in the art is unable to fully predict possible results from the administration of the instant compound due to the unpredictability of treating “ocular disorder” without limitation (i.e., no named ocular disorder). The “ocular disorder” without limitation (i.e., no named ocular disorder) is known to have many obstacles that would prevent one of ordinary skill in the art from accepting treating regimen on its face.
The amount of direction or guidance present and the presence or absence of working examples
The only direction or guidance present in the instant specification is the description of treating a number of disorders or diseases, see pages 41-45 of the
specification. There are no in vitro or in vivo working examples present for
“ocular disorder” without limitation (i.e., no named ocular disorder) by the
administration of the instant invention.
The breadth of the claims
The breadth of the claims is methods of use of the instant compounds treating
“ocular disorder” without limitation (i.e., no named ocular disorder).
The quantity of experimentation needed
The quantity of experimentation needed is undue experimentation. One of skill in
the art would need to determine how “ocular disorder” without limitation (i.e., no named ocular disorder) would be benefited (i.e., treated) by the administration of the instant invention and would furthermore then have to determine which of the claimed methods of use would provide “ocular disorder” without limitation (i.e., no named ocular disorder), if any.
The Ievel of the skill in the art
The Ievel of skill in the art is high. However, due to the unpredictability in the pharmaceutical art, it is noted that each embodiment of the invention is required to be individually assessed for physiological activity by successful conclusion'' and ''patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable''.
in vitro and in vivo screening to determine which methods of use exhibit the desired pharmacological activity and which would benefit from this activity. Thus, the specification fails to provide sufficient support of the broad use of the pharmaceutical composition of the instant claims for the various diseases or disorders.
As a result necessitating one of skill to perform an exhaustive search for which metabolic-related disease s can be treated by what pharmaceutical compound of the instant claims in order to practice the claimed invention. Thus, factors such as "sufficient working examples", "the level of skill in the art" and "predictability", etc. have been demonstrated to be sufficiently lacking in the instantly claimed methods. In view of the breadth of the claim, the chemical nature of the invention, and the lack of working examples regarding the activity of the claimed compound regards to the treatment of the many diseases, one having ordinary skill in the art would have to undergo an undue amount of experimentation to use the invention commensurate in scope with the claims.
Genentech lnc. v. Novo Nordisk A/S (CA FC) 42 USPQ2d 1001, states that “ a
patent is not a hunting license. It is not a reward for search, but compensation for its successful conclusion'' and ''patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable''.
Therefore, in view of the Wands factors and ln re Fisher (CCPA 1970) discussed above, to practice the claimed invention herein, a person of skill in the art would have to engage in undue experimentation, with no assurance of success. This rejection can be overcome by incorporation of named ocular disorder supported by the specification (i.e., claim 42) into claim 1, 23 and 37 respectively would obviate the rejection.
4. 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.
Claim Rejections - 35 USC § 103
5. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims under 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 35 U.S.C. 103(c) and potential 35 U.S.C. 102(f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1-9, 37, 40 and 42 are rejected under 35 U.S.C. 103(a) as being obvious
over Palczewski et al. US Wo 2018/157129 A1.
Applicants claim a method of treating an ocular disorder in a subject in
need thereof, the method comprising: administering to the subject a therapeutically
effective amount of a compound of formula (I):
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91
127
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, wherein R7 or R8 is H
or D, see claim 1. Dependent claims 2-9, 40 and 42 further limit the scope of methods,
i.e., specific variables of R1, R2, R3, R7 and R8.
Applicants claim a method of treating an ocular disorder in a subject in
need thereof, the method comprising: administering to the subject a therapeutically
effective amount of a compound selected from
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430
972
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, see claim 37.
Determination of the scope and content of the prior art (MPEP §2141.01)
Palczewski et al. ‘129 discloses a method of treating an ocular disorder in a
subject in need thereof, the method comprising:
administering to the subject a therapeutically effective amount of a retinal sequestering
compound of formula (I):
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92
338
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, wherein R1 is H, alkyl or fluoro alkyl, see pages
60-61.
Determination of the difference between the prior art and the claims (MPEP §2141.02)
The difference between instant claims and Palczewski et al. ‘129 is that the instant claims are embraced within the scope of Palczewski et al. ‘129.
Finding of prima facie obviousness-rational and motivation (MPEP §2142-2143)
One having ordinary skill in the art would find the claims 1-9, 37, 40 and 42 prima facie obvious because one would be motivated to employ the methods of use of Palczewski et al. ‘129 to obtain instant invention.
The motivation to make the claimed methods of use derived from the known methods of use of Palczewski et al. ‘129 would possess similar activity to that which is claimed in the reference.
Double Patenting
6. 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. See 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).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim 1 is rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 1 of Palczewski et al. US 12,144,788, and over claim 1 of Palczewski et al. US 11,252,489 respectively. Although the conflicting claims are not identical, they are not patentably distinct from each other and reasons are as follows.
Applicants claim a method of treating an ocular disorder in a subject in
need thereof, the method comprising: administering to the subject a therapeutically
effective amount of a compound of formula (I):
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91
127
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Greyscale
, wherein R7 or R8
is H or D, see claim 1.
Palczewski et al. ‘788 claims a compound of formula (I),
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182
416
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, wherein R1 is selected from the group consisting of:
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184
406
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, see column 45. Palczewski et al. ‘788 compounds are used for treating ocular disorders, see column 23.
Palczewski et al. ‘489 claims of decreasing all-trans retinal accumulation in ocular tissue in a subject in need thereof, the method comprising: administering to the subject a therapeutically effective amount of a retinal sequestering compound of formula (II)
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182
416
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, wherein R1 is selected from the group consisting of:
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184
406
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Greyscale
, see column 45.
The difference between instant claims and Palczewski et al. ‘788 and ‘489 is that the instant claims are embraced within the scope of Palczewski et al. ‘788 and ‘489.
One having ordinary skill in the art would find the claim 1 prima facie obvious because one would be motivated to employ the methods of use of Palczewski et al. ‘788 and ‘489 to obtain instant invention.
The motivation to make the claimed methods of use derived from the known methods of use of Palczewski et al. ‘788 and ‘489 would possess similar activity to that which is claimed in the reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REI TSANG SHIAO whose telephone number is (571)272-0707. The examiner can normally be reached on 8:30 am-5:00 pm.
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/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1691
November 11, 2025