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 .
Election/Restrictions
Applicant’s election of a ligand-drug conjugate (LDC) comprising (i) the drug linker DL12; (ii) a Valine-Alanine dipeptide cleavable moiety; (iii) the ligand trastuzumab; (iv) the drug Exatecan; and (v) the orthogonal hydrophobicity masking entity Polysarcosine 10 in the reply filed on 6/24/2026 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 40-55 are pending in the instant application.
Claims 40, 42-44, 46-50, and 52-55 are being examined on the merits.
Claims 41, 45, and 51 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/24/2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 40, 42-44, 46-50, and 52-55 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.
Instant claims 40, 44, and 50 recite exemplary language that renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Specifically, the phrase “optionally” renders the claim indefinite regarding instant claims 40, 44, and 50, because it is unclear whether the limitations following the phrase are part of the claimed invention. The limitations prior to and following the term “optionally” have different claim scopes. Thus, the metes and bounds of the claims are unclear.
Instant claims 42-43 depend on instant claim 40, instant claims 46-49 depend on instant claim 44, and instant claims 52-55 depend on instant claim 50 also require the same limitations, and therefore also indefinite.
Claim Rejections - 35 USC § 102
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.
Claim(s) 40, 42-44, 46-47, 50, and 52-53 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Viricel (WO2019081455A1, Priority to 10/23/2017, Published on 5/2/2019, IDS entered on 10/5/2023).
Regarding instant claim 40, Viricel teaches a ligand-drug conjugate compound (LDC) comprising formula (XV) as shown below,
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wherein (i) L is an orthogonal connector; (ii) HPSMW results from covalent binding of a single molecular weight homopolymer; (iii) D is a cytotoxic drug; (iv) X is a cleavable moiety; (v) Z is an optional spacer; and (vi) a, b, and m is 1 (page 20, lines 17-page 21, line 3). Additionally, Viricel discloses:
the ligand is an antibody, e.g. trastuzumab (page 10, line 25-page 11, line 14);
the HPSMW, e.g., a single molecular weight polysarcosine provides an efficient hydrophobicity masking properties when grafted in parallel (i.e. orthogonal) orientation in relation to the drug unit (page 21, lines 4-9), wherein the homopolymer of sarcosine comprises formula (III) shown below,
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wherein (i) R1 and R2 are different wherein one is H or an inert group and the other is a functionalized reactive group, and (ii) k is 10 (page 15, line 16-page 17, line 3);
the cytotoxic drug, D, which refers to any type of drug or compounds, e.g. camptothecin analogs, such as exatecan (page 14, line 31-page 15, line 1); and
the cleavable moiety, X, that links the drug unit to the remainder of the LDC is a dipeptide cleavage site, e.g. Val-Ala dipeptide cleavable unit (page 13, lines 6-12).
Regarding instant claim 44, Viricel teaches an intermediate compound of the LDC comprising formula (XVI) as shown below,
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wherein (i) L is an orthogonal connector; (ii) HPSMW results from covalent binding of a single molecular weight homopolymer; (iii) D is a cytotoxic drug; (iv) X is a cleavable moiety; (v) Z is an optional spacer; and (vi) a, b, and m is 1 (page 21, line 27-page 22, line 4). The details of HPSMW, drug, and cleavable moiety are discussed above (see discussion for claim 40).
Regarding instant claims 42-43 and 46-47, Viricel teaches the cleavable group links the drug unit to the remainder of the ligand-drug conjugate, wherein the recognition site for enzymatic treatment is usually a dipeptide cleavage site, e.g. Val-Ala dipeptide cleavable unit (page 13, lines 6-12).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 48-50 and 52-55 are rejected under 35 U.S.C. 103 as being unpatentable over Viricel (WO2019081455A1, Priority to 10/23/2017, Published on 5/2/2019, IDS entered on 10/5/2023) as applied to claim 44 above, and further in view of Bargh (Bargh et al, “Cleavable linkers in antibody-drug conjugates”, July 11, 2019, Chem. Soc. Rev., 48:4361-4374, IDS entered on 10/5/2023; hereinafter Bargh).
The teachings of Viricel are discussed above in the 102 rejection. Viricel also teaches the spacer unit comprising formula (XVII) comprising the intermediate compound of formula (XXIII), wherein the intermediate compound of formula (XVI) discussed above is linked to a maleimide moiety (page 22, line 6-page 23, line 31; page 8, line 14-page 10, line 23). Viricel also teaches in Example 7 the synthesis using a NH2-glucouronide-MMAE, which is identified in Example 10 when producing the control, which is:
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, (2R,3R,4R,5S,6R)-6-(2-(3-aminopropanamido)-4-((5S,8S,11S,12R)-11-((S)-sec-butyl)-12-(2-(2-((1R,2R)-3-(((1S,2R)-1-hydroxy-1-phenylpropan-2-yl)amino)-1-methoxy-2-methyl-3-oxopropyl)pyrrolidin-1-yl)-2-oxoethyl)-5,8-diisopropyl-4,10-dimethyl-3,6,9-trioxo-2,13-dioxa-4,7,10-triazatetradecyl)phenoxy)-3,4,5-trihydroxytetrahydro-2H-pyran-2-carboxylic acid ("NH2-glucuronide-MMAE") (pages 57-60, Example 7; pages 77-81, Example 10, specifically §10.1 Synthesis of compound MAL-glucouronideMMAE). Furthermore, Viricel teaches intermediates with an alkyne-glucuronide-exatecan in Example 6.6:
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, wherein the conjugation reaction was:
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as shown in example 9.11(pages 53-54, Example 6, §6.6 Synthesis of compound alkyne-glucuronide-Exatecan; page 75, Example 9, §9.11 Compound MAL-phenyl-Ngly(triazole-glucuronide-Exatecan-PSARn).
However, Viricel does not teach a para-aminobenzyl carbamate (PABC) linkage used as a self immolative spacer that links the Val-Ala cleavable moiety with the cytotoxic drug, exatecan.
The deficiency is resolved by Bargh.
Bargh teaches that drugs that are sterically bulky requires a spacer unit for enzymatic activity, therefore, Bargh synthesized an Aaa-Aaa-PABC-Doxorubicin motif wherein a PABC linkage used as a self immolative spacer that spontaneously undergoes a 1,6-elimination upon proteolysis to release the drug, CO2, and aza-quinone methide. Bargh also discloses that Val-Cit-PABC containing linkers were also successfully applied to ADCs bearing the more potent MMAE payload (page 4368, left column, §3.1.1 Initial Development; Fig. 13). Furthermore, Bargh discusses using Val-Ala motif instead of the Val-Cit motif, because the Val-Ala motif exhibits lower hydrophobicity, resulting in lower ADC aggregation compared to the Val-Cit analogue while the in vitro and in vivo tests showed no observable difference in potency, efficacy or toxicity (page 4370, left column, §3.1.4 The Val-Ala motif).
Regarding instant claim 48, it would have been obvious for a person having ordinary skill in the art at the time of filing to modify the intermediate compound of the LDC of formula (XXIII) comprising: (i) a maleimide connector of formula XVII linked to an optional spacer, Z, comprising polyethylene glycol (PEG), (ii) an orthogonal connector comprising the amino acid glutamic acid, (iii) the HPSMW comprising 10 polysarcosine monomers wherein R1 and R2 comprise an OH and COCH2, (iv) a Val-Ala dipeptide cleavable unit, and (v) exatecan connected to the dipeptide cleavable unit as taught by Viricel to comprise the PABC linkage used as a self immolative spacer that spontaneously undergoes a 1,6-elimination upon proteolysis between the polypeptide cleavable unit and the drug as taught by Bargh, This is obvious because, Viricel teaches an intermediate compound of the LDC comprising formula (XXIII) wherein (i) L is an orthogonal connector; (ii) HPSMW e.g., a single molecular weight polysarcosine provides efficient hydrophobicity masking properties when grafted in orthogonal orientation in relation to the drug unit, wherein the homopolymer of sarcosine comprises formula (III) wherein (1) R1 and R2 are different wherein one is OH and the other is a COCH2, and (2) k is 10; (iii) D is the cytotoxic drug exatecan; (iv) X is the Val-Ala dipeptide cleavable moiety; (v) Z is an optional spacer comprising PEG connected to a maleimide connector; and (vi) a, b, and m is 1, and Bargh teaches using Val-Ala-PABC linkers as a self immolative spacer that spontaneously undergoes a 1,6-elimination upon proteolysis to release the drug for enzymatic activity of drugs that are sterically bulky as well as to lower ADC aggregation. Therefore, it is obvious to a skilled artisan with reasonable expectation of success to have been motivated to form the instant intermediate compound, wherein the compound is
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Instant claim 49 is directed to a specific stereochemistry of the intermediate compound of the LDC recited in claim 48 wherein the intermediate compounds are further specified by either an R or S configuration. Under the Cahn-Ingold-Prelog (CIP) rules, assignment of an R or S configuration is an inherent property of the three-dimensional arrangement of substituents around a chiral center, and the names of these compounds must include the “handedness” of the molecule. Therefore, the designation does not create a new structural feature, but rather describes an intrinsic property of the molecule that is inherently present once the chiral center exists. Accordingly, it would have been obvious to a person of ordinary skill in the art that the molecule necessarily exhibits either an R or S stereochemical configuration.
Regarding instant claims 50, and 52-54, it would have been obvious for a person having ordinary skill in the art at the time of filing to exchange the alkyne-azide conjugation reaction present in Example 9.11 for the effective condensation reaction in Example 7, wherein a primary amine is conjugated to a linker via a glutamic acid side chain as shown below:
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as taught by Viricel and substitute the glucuronide enzyme activation moiety to a Val-Ala dipeptide cleavage moiety to form a Val-Ala-PABC linkage used as a self immolative spacer that spontaneously undergoes a 1,6-elimination upon proteolysis between the polypeptide cleavable unit and the drug as taught by Bargh. This is obvious because, Viricel teaches 1) the molecule in Example 7,
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, has a glutamic acid side chain in red,
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, that shows the glutamine side chain reacts with the NH2-glucouronide-MMAE via a condensation reaction; and 2) intermediates with an alkyne-glucuronide-Exatecan as shown in Example 6.6 conjugated via an alkyne-azide conjugation reaction as shown in Example 9.11, and Bargh teaches using Val-Ala-PABC linkers as a self immolative spacer that spontaneously undergoes a 1,6-elimination upon proteolysis to release the drug for enzymatic activity of drugs that are sterically bulky as well as to lower ADC aggregation. Therefore, it is obvious to a skilled artisan with reasonable expectation of success to have been motivated to form the instant intermediate compound, wherein the compound is
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.
Instant claim 55 is directed to a specific stereochemistry of the intermediate compound of the LDC recited in claim 54 wherein the intermediate compounds are further specified by either an R or S configuration. Under the Cahn-Ingold-Prelog (CIP) rules, assignment of an R or S configuration is an inherent property of the three-dimensional arrangement of substituents around a chiral center, and the names of these compounds must include the “handedness” of the molecule. Therefore, the designation does not create a new structural feature, but rather describes an intrinsic property of the molecule that is inherently present once the chiral center exists. Accordingly, it would have been obvious to a person of ordinary skill in the art that the molecule necessarily exhibits either an R or S stereochemical configuration.
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 40, 42-44, and 46-47 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/894,701 (Viricel, US20250057964A1; hereinafter ‘701). Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding instant claims 40, and 42-43, claim 1 of ‘701 teaches a Ligand-Drug-Conjugate compound (LDC) having the following formula (XV)
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, wherein (i) L is an orthogonal connector that allows for HPSMW to be in an orthogonal orientation with respect to (X-D) wherein L is glutamic acid (claims 7 and 8 of ‘701); (ii) HPSMW is polysarcosine (claim 2 of ‘701) that results from covalent binding to said orthogonal connector L, of a single molecular weight homopolymer having formula (I):
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, wherein R1 and R2 are different wherein one of R1 and R2 is H or an inert group, the other one of R1 and R2 being a functionalized reactive group, e.g. thiol reactive groups, such as maleimides (claim 4 of ‘701), said group being reactive for covalently binding a bindable group, in such reaction conditions that the inert group is non-reactive, Z1 and Z2 are optional spacers, and n is 1 and k is 10 (claim 3 of ‘701); (iii) D is an anticancer drug (claim 6 of ‘701); (iv) X is an optional cleavable moiety for releasing D wherein X is a Val-Ala dipeptide cleavable moiety (claims 9 and 10 of ‘701); (v) Z is an optional spacer comprising formula (XVII) (claim 11 and 12 of ‘701); and (vi) a is 1, b is 1, and m is 1. Claim 5 of ‘701 also teaches that the ligand is an antibody.
Regarding instant claims 44 and 46-47, claim 13 of ‘701 teaches an intermediate compound having formula (XVI)
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, wherein (i) L is an orthogonal connector; (ii) HPSMW is a polysarcosine (claim 14 of ‘701) that results from covalent binding to said orthogonal connector L, of a single molecular weight homopolymer having formula (I),
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, wherein R1 and R2 are different, and one of R1 and R2 is H or an inert group, the other one of R1 and R2 being a functionalized reactive group, said group being reactive for covalently binding a bindable group, in such reaction conditions that the inert group is non-reactive, Z1 and Z2 are optional spacers, and n is 1 and k is 10; (iii) D is a cytotoxic drug; (iv) X is an optional cleavable moiety for releasing D (v) Z is an optional spacer; and (vi) a is 1 and b is 1. Claims 16 and 17 of ‘701 also teaches a compound comprising formula (XXIII),
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, wherein R6 is C1-C10 alkylene substituted with one or more substituents, e.g. –O- and HPSMW is polysarcosine (see above for details for Z, D, X, and L).
Claims 48 and 49 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-17 of copending Application No. 18/894,701 (Viricel, US20250057964A1; hereinafter ‘701) in view of Bargh (Bargh et al, “Cleavable linkers in antibody-drug conjugates”, July 11, 2019, Chem. Soc. Rev., 48:4361-4374, IDS entered on 10/5/2023; hereinafter Bargh).
This is a provisional nonstatutory double patenting rejection.
The teachings of ‘701 are discussed above.
However, ‘701 does not teach a para-aminobenzyl carbamate (PABC) linkage used as a self immolative spacer that links the Val-Ala cleavable moiety with the cytotoxic drug, exatecan.
The deficiency is resolved by Bargh.
The teachings of Bargh are discussed above in the 103 rejection.
Regarding instant claim 48, it would have been obvious for a person having ordinary skill in the art at the time of filing to modify the intermediate compound of the LDC of formula (XXIII) comprising: (i) a maleimide connector of formula (XVII) linked to an optional spacer, Z, comprising polyethylene glycol (PEG), (ii) an orthogonal connector comprising the amino acid glutamic acid, (iii) the HPSMW comprising 10 polysarcosine monomers wherein R1 and R2 comprise an OH and COCH2, (iv) a Val-Ala dipeptide cleavable unit, and (v) exatecan connected to the dipeptide cleavable unit as taught by ‘701 to comprise the PABC linkage used as a self immolative spacer that spontaneously undergoes a 1,6-elimination upon proteolysis between the polypeptide cleavable unit and the drug as taught by Bargh, This is obvious because, ‘701 teaches an intermediate compound of the LDC comprising formula (XXIII) wherein (i) L is an orthogonal connector; (ii) HPSMW e.g., a single molecular weight polysarcosine provides efficient hydrophobicity masking properties when grafted in orthogonal orientation in relation to the drug unit, wherein the homopolymer of sarcosine comprises formula (III) wherein (1) R1 and R2 are different wherein one is OH and the other is a COCH2, and (2) k is 10; (iii) D is the cytotoxic drug exatecan; (iv) X is the Val-Ala dipeptide cleavable moiety; (v) Z is an optional spacer comprising PEG connected to a maleimide connector; and (vi) a, b, and m are 1, and Bargh teaches using Val-Ala-PABC linkers as a self immolative spacer that spontaneously undergoes a 1,6-elimination upon proteolysis to release the drug for enzymatic activity of drugs that are sterically bulky as well as to lower ADC aggregation. Therefore, it is obvious to a skilled artisan with reasonable expectation of success to have been motivated to form the instant intermediate compound, wherein the compound is
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Instant claim 49 is directed to a specific stereochemistry of the intermediate compound of the LDC recited in claim 48 wherein the intermediate compounds are further specified by either an R or S configuration. Under the Cahn-Ingold-Prelog (CIP) rules, assignment of an R or S configuration is an inherent property of the three-dimensional arrangement of substituents around a chiral center, and the names of these compounds must include the “handedness” of the molecule. Therefore, the designation does not create a new structural feature, but rather describes an intrinsic property of the molecule that is inherently present once the chiral center exists. Accordingly, it would have been obvious to a person of ordinary skill in the art that the molecule necessarily exhibits either an R or S stereochemical configuration.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jieun Ham whose telephone number is (571)272-7779. The examiner can normally be reached Monday - Friday 7-2.
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/J.H./Examiner, Art Unit 1643
/JULIE WU/Supervisory Patent Examiner, Art Unit 1643
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