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 without traverse of Group I (claims 1 – 5, and 10 – 22) drawn to a compound having a structure of Formula I:
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, and the species election of compound 58 of structure
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in the reply filed on January 14th, 2026 is acknowledged.
Claims 6 – 9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II (a method of preventing or treating a sleep disorder or sleep syndrome), there being no allowable generic or linking claim. Moreover, claims 2 – 3, are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species of Formula I. Election was made without traverse in the reply filed on January 14th, 2026.
Claims 1 – 22 are currently pending in the application. However, due to a restriction requirement, claims 2 – 3, and 6 – 9 are withdrawn from further consideration and claims 1, 4 – 5, and 10 – 22 are being examined on the merits herein.
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.
Claims 1, 4 – 5, 10 – 12, and 18 – 22 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. US 7015200 B2 Mamelak et. al. (herein after Mamelak’200) in view of Kruse et. al. ((1976), Protection of Hydroxyl- and Thiol Groups as 2’-O-Tetrahydrofuranyl-(THF-)Ether, Tetrahedron Letters, 20, 1725 – 1728).
Regarding claims 1, 4 – 5, 10 – 12, and 18 – 22, Mamelak’200 teach that gamma – hydroxybutyric acid or "gamma hydroxybutyrate" (GHB), of structure
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is an endogenous compound with hypnotic properties that is found in many human body tissues (column 1 lines 17 – 20). Moreover, Mamelak’200 teach that GHB treatment substantially reduces the signs and symptoms of narcolepsy ( e.g., daytime sleepiness, cataplexy, sleep paralysis and hypnagogic hallucinations) (column 1 lines 53 – 56). Furthermore, Mamelak’200 teach that the efficacy of GHB is limited by the high doses required to produce a therapeutic effect and by its short duration of action (column 2 lines 7 – 9). Additionally, Mamelak’200 teach that there is a need for GHB compositions that can enhance the uptake of the drug, deliver effective therapeutic doses in a time-delayed fashion, and target specific organs (column 2 lines 9 – 12).
Specifically, Mamelak’200 teach a compound of formula (IV):
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wherein L and L’; are individually H, (C1-C6)alkyl or a hydroxyl protecting group (column 3 lines 12 – 22). Moreover, Mamelak’200 teach that the "hydroxyl protecting group" includes removable hydroxy moiety protecting groups known to the art, such as acid- or base-labile groups such as acetals THP, of structure
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and 1-ethoxy)ethyl (column 5 lines 51 – 54). Mamelak’200 teach that a compound of the present invention can be employed as the free acid or alcohol, or as a pharmaceutically acceptable salt or ester thereof which include tosylate, methanesulfonate, acetate, citrate, malonate, tartrate, succinate, benzoate, ascorbate, a-ketoglutarate, and a-glycerophosphate (claim 5) (column 6 lines 45 – 47 and 55 – 57). Furthermore, Mamelak’200 teach that the invention provides a pharmaceutical formulation comprising a compound of formula (I), (II), or (III), together with one or more pharmaceutically acceptable carriers therefor and, optionally, other therapeutic and/or prophylactic ingredients (column 8 lines 62 – 66). Now while Mamelak’200 explicitly recites formula (I), (II), or (III), it would have been obvious to one of ordinary skill in the art that the pharmaceutical composition can also include prior art formula IV.
Additionally, Mamelak’200 teach that pharmaceutical formulations include those suitable for oral or parenteral (including intramuscular, subcutaneous and intravenous) administration (column 9 lines 5 – 7). Moreover, Mamelak’200 teach that for oral administration (claim 18) discrete unit dosage forms such as hard or soft gelatin capsules, cachets or tablets (claim 20) each containing a predetermined amount of the active ingredient; as a powder or as granules; as a solution, a suspension or as an emulsion; or in a chewable base such as a synthetic resin or chicle for ingestion of the active ingredient from a chewing gum (column 10 lines 32 – 38). Furthermore, Mamelak’200 teach that tablets and capsules for oral administration may contain conventional excipients such as binding agents (claim 10), fillers, lubricants, disintegrants, or wetting agents (claim 19) (column 10 lines 38 – 41). Additionally, Mamelak’200 teach that useful dosages of the compounds of formula (I), (II), (III), (IV) or (V) can be determined by comparing their in vitro activity, and in vivo activity in animal models, extrapolated to determine the effective dosages in mice, and other animals, to humans (claims 12 and 22), and are well known to the art column 12 lines 66 – 67 and column 13 lines 1 – 3). Mamelak’200 teach that the desired dose may conveniently be presented in a single dose (claim 11) or as divided doses administered at appropriate intervals, for example, as two (claim 21), three, four or more sub-doses per day (column 13 lines 31 – 34).
While Mamelak’200 does teach that a compound of formula (IV):
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wherein L and L; are individually H, (C1-C6)alkyl or a hydroxyl protecting group includes removable hydroxy moiety protecting groups known to the art, such as acid- or base-labile groups such as acetals THP, of structure
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Mamelak’200 fails to exemplify a compound of the structure
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(claim 1 and 4).
Nevertheless, Mamelak’200 does suggest that a compound species of the structure
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wherein, L’ is independently a H and L is THP; falls with in the scope of the disclaimer. Furthermore, given that the only structural difference between the prior art compound above and the instant compound seen here
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is the addition of a single -CH2- unit in the prior art compound of Mamelak’200. Thus the prior art compound of Mamelak’200 and the instant compound ore structural isomers and the instant species are homologs. Hence compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977) (MPEP 2144.09 (II)).
Nonetheless, Kruse et. al. teach the conversion of alcohols into their corresponding 2’-O-tetrahydropyranyl-(THP-)ethers as an extensively used protection method (page 1725 paragraph 1). Alternatively, Kruse et. al. teach that since tetrahydrofuran (THF) as a protecting group combines stability under a wide range of conditions with susceptibility to facile removal under relatively mild acidic conditions (page 1725 paragraph 1). Moreover, Kruse et. al. teach use of THP as an inexpensive, fast, and simple procedure for converting alcohols into their THF-ethers (page 1725 paragraph 3). Thus the prior art pf Kruse et. al. teach the use of THF as an alternative protecting group to THP for the protection of alcohols.
Therefore it would have been obivous before the effective filing date of the instant application to modify the compound of Mamelak’200, that is to make L a protecting group, in view of Kruse et. al., that is to have thew protecting group as THF. One of ordinary skill in the art would have been motivated to make this modification since both THF and the prior art THP are both protecting groups for alcohols. One of ordinary skill in the art would have had a reasonable expectation of success because THF as a protecting group is stable under a wide range of conditions and is removed under relatively mild acidic conditions.
Claims 13 – 17 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. US 7015200 B2 Mamelak et. al. (herein after Mamelak’200) in view of Kruse et. al. ((1976), Protection of Hydroxyl- and Thiol Groups as 2’-O-Tetrahydrofuranyl-(THF-)Ether, Tetrahedron Letters, 20, 1725 – 1728) as applied to claims 1, 4 – 5, 10 – 12, 14 – 15, and 18 – 22 above, and further in view of US Patent Application Publication US 2004/0229943 A1 to Hughes et. al. (herein after Hughes’943).
The teachings of Mamelak’200 and Kruse et. al. as they relate to claim 1, from which claims 13 – 17 depend, are given previously in this office action and are fully incorporated here.
While, the prior art of Mamelak’200 and Kruse et. al. teach that the invention provides a pharmaceutical formulation comprising a compound of the disclosure, that is of formula (IV) together with one or more pharmaceutically acceptable carriers therefor and, optionally, other therapeutic and/or prophylactic ingredients. The prior art of Mamelak’200 and Kruse et. al. fail to teach whether the pharmaceutical composition can be formulated into a kit that includes instructions for use (claim 13). Moreover, the prior art of Mamelak’200 and Kruse et. al. fail to teach whether the other therapeutic agent is selected from the group as recited in claim 14.
Nevertheless, Hughes’943 teach compositions and methods for the treatment of disorders through the administration of modafinil (claim 14) with M-drugs (abstract). Hughes’943 teach a composition can include therapeutically effective amounts of two or more active compounds including an analeptic and one or more drugs (page 1 paragraph 0009) for treating narcolepsy (page 1 paragraph 0011). Moreover, Hughes’943 teach a kit according to the present invention includes at least one dosage form containing an analeptic, including but not limited to modafinil, and a separate dosage form containing at least one M-drug which include instructions concerning administration of the analeptic and M-drug (claim 13) (page 4 paragraph 0042). Furthermore, Hughes’943 teach that the analeptic and/or M-drug can be in any suitable dosage form, including solid dosage forms which further include tablets (claims 13 and 15), capsules, pills, troches, cachets, and the like, and/or liquid dosage forms such as an oral elixir or an IV fluid (page 4 paragraph 0043). Additionally, Hughes’943 teach that the dosage form of the analeptic can be the same type or a different type than the M-drug (page 4 paragraph 0043). Moreover, Hughes’943 teach that dose of an analeptic can be administered at a different time relative to the M-drug dose or simultaneously (i.e., analeptic dose administration within less than 1 hour before or after administration of the M-drug); and if simultaneous, the administration of the analeptic and M-drug can also be through the use of a single unit dose including both an analeptic and M-drug (claim 17) (page 4 paragraph 0051).
Given that the prior art of Mamelak’200 and Kruse et. al. taught that the THF protected compound of prior art formula IV were useful in the treatment of narcolepsy and the prior art of Hughes’943 taught that modafinil was useful in the treatment of narcolepsy it would have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to combine the teachings of Mamelak’200 and Kruse et. al., that is for the THF protected compound of prior art formula IV were useful in the treatment of narcolepsy in view of Hughes’943 with modafinil into a single kit for the treatment of narcolepsy. One of ordinary skill in the art would be motivated to make this modification since the prior art taught that both the THF protected compound of prior art formula IV and modafinil were useful in the treatment of narcolepsy. Thus one of ordinary skill in the art would have a reasonable expectation of success and predictability because both compounds separately were useful for treating narcolepsy. Thus any result for the use of the kit containing the THF protected compound of prior art formula IV and modafinil would be reasonable expected to have at least the same effect as if the compounds were administered in separate dosage forms.
Regarding claim 16, as taught above, Hughes’943 teach that the modafinil can be formulated for oral administration as an oral tablet but it silent about an oral powder form. Now while the prior art of Hughes’943 does not explicitly teach a kit wherein the compound of any one of claims 1 to 4 is in a liquid dosage form and the additional therapeutic compound is in an oral powder form or sachet form. Nevertheless, given the above prior art teachings of Mamelak’200 and Kruse et. al. in further view of Hughes’943 it would have been with in the purview of one of ordinary skill in the art for a kit wherein the dosage forms of the THF protected compound of prior art formula IV and modafinil were modified in such a way to meet the limitation of the claims since there is a limited ways in which therapeutic compounds can be modified for oral administration.
Regarding claim 17, as taught above, Hughes’943 teach that dose of an analeptic can be administered simultaneously (i.e., analeptic dose administration within less than 1 hour before or after administration of the M-drug) or the administration of the analeptic and M-drug can also be through the use of a single unit dose including both an analeptic and M-drug. Now while the prior art of Hughes’943 does not explicitly teach a kit wherein the additional therapeutic compound is added to the liquid
dosage form of the compound prior to administration. Nevertheless, given the above prior art teachings of Mamelak’200 and Kruse et. al. in further view of Hughes’943 it would have been with in the purview of one of ordinary skill in the art for a kit wherein the dosage forms of the THF protected compound of prior art formula IV and modafinil were modified in such a way to meet the limitation of the claims since there is a limited ways in which therapeutic compounds can be modified for oral administration. Moreover, as taught above, the administration of the analeptic and M-drug can also be through the use of a single unit dose including both an analeptic and M-drug (page 4 paragraph 0051). Thus Hughes’943 suggest the administration of a dosage form where one compound is added to another before oral consumption.
Conclusion
Claims 1, 4 – 5, and 10 – 22 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAWANNA S WHITE whose telephone number is (703)756-4687. The examiner can normally be reached 7:00 am - 5:00 pm [EST] M - Th.
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/DAWANNA SHAR-DAY WHITE/Examiner, Art Unit 1627