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
This office action is in response to the application filed on 27 September 2023. Claims 58, 64-65, 69 and 74 are amended. Currently, claims 57-69, 72-74 and 93-94 are pending.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 18/284,531, filed on 27 September 2023. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 16 July 2024 was filed after the mailing date of the application of 27 September 2023. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 102 and 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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 57-69, 72-74, and 93-94 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Zhang et al. (Crystal form of 6-(cyclopropanecarboxamido)-4-((2-methoxy-3-(1-methyl-1H-1,2,4-tria-zol-3-yl)phenyl)amino)-N-(methyl-D3)pyridazine-3-carboxamide, WO2018/183656A1, 2018, entered in the IDS on 17 July 2024), D. R. Roberts (1) (Crystalline forms of 6-(cyclopropanecarboxamido)-4-((2-methoxy-3-(1-methyl-1H-1,2,4-triazol-3-yl)phenyl)amino)-N-(methylD3)pyridiazine-3-carboxamide, WO2019/232138A1, 2019, entered in the IDS on 17 July 2024), Roberts et al. (2) (Crystalline salt forms of 6-(cyclopropanecarboxamido)-4-((2-methoxy-3-(1-methyl-1H-1,2,4-triazol-3-yl)phenyl)amino)-N-(methylD3)pyridiazine-3-carboxamide, WO 2020/251911A1, 2020, entered in the IDS on 17 July 2024), Chen et al. (BMS-986165 Crystal form, preparation method therefor and use thereof, WO 2021/129467A1, 2021, entered in the IDS on 17 July 2024), Wrobleski et al. (Highly selective inhibition of tyrosine kinase 2 (TYK2) for the treatment of autoimmune diseases: discovery of the allosteric inhibitor BMS-986165, J. Med. Chem. 2019, 62, 8973-8995), and Gardner et al. (Application of high throughput technologies to drug substance and drug product development, Computers and Chemical Engineering 2004, 28, 943-953).
Wrobleski discloses the discovery, structure-activity-relationship optimization, and further characterization of compound 11 through single-crystal x-ray, in vitro and in vivo assays, and pharmacokinetics.
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The synthetic procedure for compound 11 describes obtaining a cream-colored solid after purification and concentration of the crude reaction mixture by normal phase MPLC.
Chen discloses the crystalline forms CSI and CSII of compound 11, prepared in one example, the form CSI (Example 1), by stirring in water at room temperature for several days followed by filtering and drying, and prepared in one example, the form CSII (Example 4), by dissolving in a solvent mixture of water, THF, and acetone, followed by evaporation and drying.
Roberts (2) discloses the crystalline forms C, a methane sulfonic acid salt, and D, a sulfate salt (abstract). Form C is prepared, in one example (Example 1, pg. 14), by dissolving compound 11 in THF at room temperature, treated with methane sulfonic acid, dried overnight, suspended in butyl acetate at 60°C, then filtered and dried. Form D is prepared, in one example (Example 3, pg. 15), by dissolving compound 11 in acetone, treating with sulfuric acid and warming to 55°C, followed by filtering the resulting crystals. Roberts (1) also discloses the crystalline form B, a hydrochloride acid salt, prepared in one example (Example 1, pg. 13), by dissolving compound 11 in isopropyl alcohol, treating with hydrochloric acid, and warming to 55°C, stirring overnight, cooling to room temperature and further stirred to give a thick slurry.
Zhang discloses the crystalline form A of compound 11, prepared in one example (Example 1, pg. 11), in the same manner as Wrobleski where the solid obtained after normal phase MPLC purification is defined as crystalline form A. In another example (Example 2, pg. 12), compound 11 was dissolved into THF and water, followed by polish filtering, drying, suspending in warm ethyl acetate, then filtered and dried.
Gardner outlines the importance of high throughput physical-chemical technologies in the pharmaceutical discovery and development process as rapid target identification and libraries of hundreds of thousands of possible drug candidates require the support of an efficient high throughput synthetic process. Part of this process includes the rapid generation, characterization and testing of varying salt forms of small molecules and crystallization in a variety of polymorphs as these various forms of active pharmaceutical ingredients have a very broad range of pharmacokinetic, and therefore, therapeutic properties. Gardner also notes that, despite chemo-informatic programs, there is no means to determine the extent of polymorphism of any one compound and therefore the only developmental choice is to subject the active pharmaceutical ingredient to a wide variety of crystallization conditions. To that point, Gardner elevates their proprietary technology, capable of high throughput selection of forms and formulations of pharmaceutical candidates and products as a means to overcome the previously described limitation.
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The process, CrystalMax, is described as a unit capable of screening 18,000 crystallizations in parallel and can conduct thousands of studies on a single active pharmaceutical ingredient in parallel. Gardner demonstrates this process on the FDA approved drug Ritonavir by conducting 2000 parallel crystallization experiments, obtaining and identifying the two polymorphs published by Abbott in the drug’s developmental history.
A rejection under 35 U.S.C. 102 and 103 can be made when the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102." In re Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic. The polymorphs disclosed by the prior art must inherently possess the recited PXRD, DSC, and/or TGA properties absent evidence to the contrary. Moreover, the USPTO does not have laboratory facilities to evaluate the prior art polymorphs; therefore, the burden is properly shifted to Applicant to provide evidence should Applicant believe the prior art polymorphs are not identical to those claimed and/or recited in the rejected claims. Therefore, a 35 U.S.C. 102 and 103 rejection is appropriate for these types of claims as well as for composition claims.
Several polymorphs of compound 11 are described in the prior art, including others not listed. Gardner summarizes the impetus of the prior art and the benefit of synthesizing as many polymorphs as possible of any active pharmaceutical ingredient of interest, the traditional difficulties, and technological means of overcoming these difficulties. Even if the prior art polymorphs are not identical to Applicant’s claimed/recited polymorphs, it would have nonetheless been obvious to the person of ordinary skill in the art at the time of Applicant’s earliest effective filing date to follow the teachings of Gardener and obtain Applicant’s claimed/recited polymorphs. The person of ordinary skill in the art would have had a reasonable expectation of successfully obtaining Applicant’s claimed/recited polymorphs by using Gardner’s high throughput technology which permits the person of ordinary skill in the art to evaluate thousands of crystallization experiments in parallel and identify all polymorphs of a particular active agent. A rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 (2007) (see MPEP §§ 2143, A. and 2143.02). As such, claims 57-69, 72-74 and 93-94 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Zhang, Roberts, Roberts, Chen, and Wrobleski, and additionally, rejected under 35 U.S.C. 103 as being prima facie obvious, to a person of ordinary skill in the art, further in view of Gardner.
Summary
Claims 57-69, 72-74 and 93-94 are rejected under 35 U.S.C. 102(a)(1), 35 U.S.C. 102(a)(2), and 35 U.S.C. 103.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Allen Chao whose telephone number is (571)272-7001. The examiner can normally be reached Monday - Friday 0700-1300.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James H Alstrum-Acevedo can be reached at 571-272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALLEN CHAO/Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622