DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Application
Applicant's election of the species, 75% ± 2% cyclobenzaprine HCl and 25% ± 2% β-mannitol by weight eutectic, in the reply filed on 12/16/25 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1, 4, 9, 11-20, 35-37 are pending and examined herein insofar as they read on the elected invention and species.
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, 4, 9, 11-20, 35-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 42-60 of copending Application No. 18/988,194. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a method of treating fibromyalgia by sublingual administration of a total dose of 5.6 mg of 75% ± 2% cyclobenzaprine HCl and 25% ± 2% β-mannitol by weight eutectic with a basifying agent.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1, 4, 9, 11-20, 35-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 35-50 of copending Application No. 19/421,039. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a method of treating fibromyalgia and its associated symptoms of pain, sleep disturbance, and fatigue by sublingual administration of a total dose of 5.6 mg of 75% ± 2% cyclobenzaprine HCl and 25% ± 2% β-mannitol by weight eutectic with a basifying agent.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claim Rejections - 35 USC § 103
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) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham vs 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 nonobviousness.
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(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1, 4, 9, 11-20, 35-37 are rejected under 35 U.S.C. 103(a) as being obvious over Lederman et al. (WO 2016/044796, of record) in view of Lederman et al. ("Bedtime, Rapidly Absorbed Sublingual Cyclobenzaprine (TNX-102 SL) for the Treatment of Fibromyalgia: Results of a Phase 2b Randomized, Double-Blind, Placebo- Controlled Study, 2015, Abstract 2309, of record) and ("History of Changes for Study: NCT04172831; A Study To Evaluate The Efficacy And Safety Of TNX -102 SL In Patients With Fibromyalgia (RELIEF)", ClinicalTrails.gov, 2020, 10 pages, of record).
The instant claims are directed to a method of treating fibromyalgia by administering a total dose of 5.6 mg of 75% ± 2% cyclobenzaprine HCl and 25% ± 2% β-mannitol by weight eutectic.
Lederman et al. 2016 teach that cyclobenzaprine is known to be useful for the treatment of fibromyalgia and sleep disturbances caused by chronic fatigue and chronic pain disorder (paragraph 0003). Fibromyalgia is traditionally characterized by pain, sleep disturbances, and fatigue (paragraph 0063). A preferred embodiment of cyclobenzaprine is the eutectic 75% ± 2% cyclobenzaprine HCl and 25% ± 2% β-mannitol with the basifying agent, K2HPO4 (paragraph 0005). Transmucosal administration is taught, for example sublingual tablets, films, liquids, powders, and sprays (paragraph 0061). Doses and dosing regimens can be determined by one of skill in the art according to the needs of a subject to be treated. The skilled worker may take into consideration factors such as the age or weight of the subject, the severity of the disease or condition being treated, and the response of the subject to treatment. A composition of the invention can be administered, for example, as needed or on a daily basis. In some embodiments, a composition can be administered immediately prior to sleep or several hours before sleep. Administration prior to sleep may be beneficial by providing the therapeutic effect before the onset of the symptoms of the disease or condition being treated. Dosing may take place over varying time periods. For example, a dosing regimen may last for 1 week, 2 weeks, 3 weeks, 4 weeks, 5 weeks, 6 weeks, 7 weeks, 8 weeks, 9 weeks, 10 weeks, 11 weeks, 12 weeks, or longer (paragraph 0062). The table on page 12 shows a dosage of 10 mg of cyclobenzaprine HCl. It is noted that fatigue on average will be reduced compared to placebo since Lederman et al. teach that cyclobenzaprine is useful in treating fatigue associated with fibromyalgia. However, Lederman et al. 2016 fail to disclose a total dose of 5.6 mg of cyclobenzaprine HCl divided into two 2.8 mg dosage units.
Lederman et al. 2015 teach the safety and efficacy of a rapidly absorbed sublingual cyclobenzaprine (TNX-102 SL) for the treatment of fibromyalgia, characterized by pain and sleep disturbance. TNX-102 SL is a eutectic sublingual tablet formulation of low-dose cyclobenzaprine HCl (2.8 mg) designed for rapid absorption and long-term bedtime use. Patients were randomized to receive TNX-102 SL or a placebo and outcome measures included daily pain and sleep diaries using the numerical rating scale (NRS). Data was analyzed by mean change from baseline. Responder analysis of week 12 daily diary pain showed greater than 30% improvement from baseline. All measure of sleep quality improved compared to placebo.
ClinicalTrails.gov teaches a study evaluating the efficacy and safety of TNX-102 SL in patients with fibromyalgia (title) where a total of 5.6 mg (2 x 2.8 mg) of TNX-102 SL was administered daily at bedtime (page 3).
Therefore, it would have been prima facie obvious to a person of ordinary skill in the art, at the time the claimed invention was made, to optimize the 10 mg dosage of cyclobenzaprine HCl in the method of treating fibromyalgia, as taught by Lederman et al. 2016, to a total of 5.6 mg (2 x 2.8 mg), as taught by Lederman et al. 2015 and ClinicalTrails.gov.
A person of ordinary skill in the art would have been motivated to optimize cyclobenzaprine HCl to a total dose of 5.6 mg (2 x 2.8 mg) because Lederman et al. 2015 teach that 2.8 mg of cyclobenzaprine HCl and ClinicalTrails.gov teach that 2 doses of 2.8 mg for a total of 5.6 mg of cyclobenzaprine HCl are both known, useful, and effective for treating fibromyalgia. Therefore, the skilled artisan would have had a reasonable expectation of success in treating fibromyalgia by administering a total dose of 5.6 mg of 75% ± 2% cyclobenzaprine HCl and 25% ± 2% β-mannitol by weight eutectic.
Generally, mere optimization of ranges will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “When the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimal or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); “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.” In re Peterson, 315 F. 3d at 1330, 65 USPQ 2d at 1382; lt has been held that it is within the skills in the art to select optimal parameters, such as amounts of ingredients, in a composition in order to achieve a beneficial effect. In re Boesch, 205 USPQ 215 (CCPA 1980) MPEP 2114.04
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong S. Chong whose telephone number is (571)-272-8513. The examiner can normally be reached Monday to Friday: 9 AM to 5 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Milligan, can be reached at (571)-270-7674. The fax phone number for the organization where this application or proceeding is assigned is (571)-273-8300.
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/Yong S. Chong/Primary Examiner, Art Unit 1623