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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Currently the instant application is afforded a priority date of 04/13/2022, the filing date of PCT/CN2022/086620, because an English translation of the foreign priority document, CN202110396162.1, has not been made of record.
Election/Restrictions
Applicant’s election of Group I, claims 1, 2, 10, and 13 as well as the species CPD14 (series B, wherein n is 4 and R9 is OH), in the reply filed on 03/2/2026 is acknowledged. Because applicant did not distinctly and specifically point out any errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 3-9, 11, and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/02/2026.
Claims 1, 2, 10, and 13 are under current examination.
Claim Rejections - 35 USC § 112
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 1, 2, 10, and 13 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.
The phrase “poorly soluble” in claims 1 and 10, renders the claim because it specifies a solubility but does not identify the solvent in which the drug is poorly soluble. As such one having ordinary skill cannot unambiguously ascertain the requisite solubility and the metes and bounds of the claimed drug is unclear.
The phrase “chain-like” in claim 1 renders the claim indefinite because it is unclear the extent to which or how a drug must resemble a chain in order to fall within the scope of the claims.
Claim 1 contains the trademark/trade name Soluplus. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a polymer and, accordingly, the identification/description is indefinite.
The term “Soluplus”, which is a more specific polymer than “polyvinylcaprolactam-polyvinyl acetate-polyethylene glycol” is recited in parentheses in claim 1. This renders the claim indefinite because it is unclear whether the parenthetical language is limiting or merely exemplary.
Claim 1, line 4 recites "...a mass ratio...". This language renders the claim indefinite because it suggests that there could be greater than one mass ratio of poorly soluble chain-like drug to Soluplus, raising the question of whether the entire amount of each substance is included in calculating the ratio. Amending the claim to recite "the mass ratio" would obviate the rejection. This will not raise concerns over antecedent basis because when there are two substances present in a composition, a mass ratio inherently exists.
The range “5-100” is recited in parentheses in claim 1. This renders the claim indefinite because it is unclear whether the parenthetical language is limiting or merely exemplary.
The phrase “chain-like” in claim 10 renders the claim indefinite because it is unclear the extent to which or how a drug must resemble a chain in order to fall within the scope of the claims.
In claim 10, there is language missing between the phrase “…or the anti-inflammatory drug in line 4 and “in an oral preparation…” in line 5 therefore the full scope of the claim is not clear.
Claims depending from rejected claims have also been rejected because they incorporate all of the limitations of the claims from which they depend, but fail to resolve the indefiniteness concerns outlined above.
Claim Rejections - 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 10, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hangzhou (CN 107714650; publication date 02/23/2018; cited in the IDS filed 07/03/2024; citing the English machine translation) in view of Wang et al. China Pharmacy 27(19) pp 2703-2707; publication date: 07/2016; English translation of Abstract only; cited in the IDS filed 07/03/2024); and further in view of Hou et al. (Bioorganic & Medicinal Chemistry Letters 29, pp2498-2502; publication date: 07/09/2019).
The claims are examined in view of the elected species; CPD14 (series B, wherein n is 4 and R9 is OH).
With regard to claims 1 and 10, Hangzhou discloses a series of liposoluble (i.e. poorly water soluble) glutaminase allosteric site inhibitors (page 1) having the following structural formula (see page 2 of the original document):
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In the foregoing structures, R1, R2, R3, R4, R5, R6, R7, and R8 may be selected from aromatic heterocycles, substituted alkyls, amides, ethers, lipids, halogens, silanes, thioethers, amines; X and X’ may be selected from, inter alia, Se; and X” may be an S atom or a C atom (page 2 of the English machine translation). The drug is “chain-like” in terms of the alkyl chain linking the two aromatic groups. Delivery of the compounds is improved by formulating them within a liposome formed from a polymethacrylate conjugate (i.e. a polymeric vesicle; pages 1-2 of English machine translation). Thus, Hangzhou discloses a poorly soluble chain-like selenium containing glutaminase inhibitor drug entrapped in a polymeric vesicle (the liposome).
Hangzhou does not disclose that the vesicle is a micelle formed from the polymer Soluplus.
Wang discloses that Soluplus was a well-known and highly effective micelle forming polymer that can be used to increase the solubility of poorly water soluble drugs in aqueous media (abstract).
It would have been prima facie obvious to replace the polymethacrylate liposomes disclosed by Hangzhou with Soluplus micelles. The skilled artisan would have been motivated to do so in order to improve water solubility with this powerful solubilizer and would have had reasonable expectation of success because the substance had been established as an effective solubilizer for many other lipophilic drugs.
Neither Hangzhou nor Wang disclose the elected species, CPD14.
Hou discloses selenium-containing allosteric inhibitors of glutaminase (title, abstract, page 2498, left col). Hou discloses that introduction of a methoxy group on the compound hexylselen may improve activity by a potential H-bond interaction, and discloses the following structure as hexylselen modified to have pendant methoxy groups (page 2499 left col and Fig.2):
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Hou discloses further a mono-demethylation reaction to produce the following product (S6, page 2500):
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Although Hou’s intention for the mono-demethylated product noted above is for subsequent conjugation to biotin for binding assays, one having ordinary skill in the art would have recognized that mono-demethylated 5-Me-O-hexylselen would also have the property of improved activity by a potential H-bond interaction because the oxygen that provides the H-bonding site remains on both aromatic groups (the -OMe and -OH groups).
With regard to instant claims 2 and 13 and the elected species, it would have been prima facie obvious to use the mono-demethylated 5-Me-O-Hexylselen (i.e. the elected species and compound falling within the scope of instant claims 2 and 13) as the glutaminase inhibitor in the invention of Hangzhou/Wang. The skilled artisan would have been motivated to do so because introduction of the -OMe and -OH groups provides improved activity via potential H-bond interaction, and had reasonable expectation of success because the compound 5-Me-O-Hexylselen falls within the broader scope of compounds disclosed by Hangzhou.
With regard to the limitation of instant claim 13 requiring the drug to be anti-tumor, antibacterial, or anti-inflammatory, the examiner considers this property to be inherent, as the instant specification indicates that CPD14 (the elected species) has these properties. Moreover, Hou teaches that glutaminase inhibitors are anti-cancer agents (page 2498, left col).
Claims 1, 2, 10, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Fang et al. (RSC Chemical Biology 2 pp1669-1681; publication date: 08/21/2021) in view of Hou et al. (Bioorganic & Medicinal Chemistry Letters 29, pp2498-2502; publication date: 07/09/2019).
The claims are examined in view of the elected species; CPD14 (series B, wherein n is 4 and R9 is OH).
The examiner notes that Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection at this point in prosecution because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
At this point in prosecution, Fang is prior art under 35 102(a)(1) and published within the grace period afforded the instant application. Applicant may be able to disqualify Fang as prior art with persuasive evidence that the reference is excepted under 35 USC 102(b)(1)(A) or 102(b)(1)(B). See MPEP §§ 2153 and 717 for further guidance.
Fang discloses that self-assembly micelles formed from Soluplus significantly enhance solubility and biological stability in vivo of the antitumor glutaminase inhibitor, hexylselen (title, abstract page 1669, Fig 1, and Fig 2).
Fang does not disclose the elected species, CPD14.
Hou discloses selenium-containing allosteric inhibitors of glutaminase (title, abstract, page 2498, left col). Hou discloses that introduction of a methoxy group on the compound hexylselen may improve activity by a potential H-bond interaction, and discloses the following structure as hexylselen modified to have a pendant methoxy group (page 2499 left col and Fig.2):
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Hou discloses further a mono-demethylation reaction to produce the following product (S6, page 2500):
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Although Hou’s intention for the mono-demethylated product noted above is for subsequent conjugation to biotin, one having ordinary skill in the art would have recognized that mono-demethylated 5-Me-O-hexylselen would also have the property of improved activity by a potential H-bond interaction because the oxygen that provides the H-bonding site remains on both aromatic groups (the -OMe and -OH groups).
With regard to instant claims 2 and 13 and the elected species, it would have been prima facie obvious to use the mono-demethylated 5-Me-O-Hexylselen (i.e. the elected species and compound falling within the scope of instant claims 2 and 13) as the glutaminase inhibitor in the invention of Fang. The skilled artisan would have been motivated to do so because introduction of the -OMe and -OH groups provides improved activity via potential H-bond interaction, and had reasonable expectation of success because the compound 5-Me-O-Hexylselen falls within the broader scope of compounds disclosed by Hangzhou.
With regard to the limitation of instant claim 13 requiring the drug to be anti-tumor, antibacterial, or anti-inflammatory, the examiner considers this property to be inherent, as the instant specification indicates that CPD14 (the elected species) has these properties. Moreover, Hou teaches that glutaminase inhibitors are anti-cancer agents (page 2498, left col).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE PEEBLES whose telephone number is (571)272-6247. The examiner can normally be reached Monday through Friday: 9 am to 3 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE PEEBLES/Primary Examiner, Art Unit 1617