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
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/21/25 has been entered.
Claims 1-24 are pending. Claims 2-4, 6, 8-11 and 15-24 remain withdrawn. The examiner acknowledges applicant’s amendment to the claims to overcome the 112 and 102 rejections in the office action filed on 5/21/25. The examiner withdraws these rejections based on applicant’s amendments filed on 10/21/25. However, a new 112 rejection, and a new 102 rejection over Balunas et al. below is in order.
As earlier indicated, applicant’s elected species had been found allowable Compound 19a:
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Since applicant’s elected species is in the form of the protonated carboxylic acid and not the salt form, claim 7 which appears to be drawn to the salt form is withdrawn as being non-readable on applicant’s originally elected species, in applicant’s response filed 8/9/24.
The new species found by the examiner is shown below (see the 102 rejection over Balunas et al. also below):
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Thus, claims 2-4, 6, 8-11 and 15-24 are withdrawn and claims 1, 5, 7 and 12-14 will be examined in this office action.
Objections
Claim 5 is objected to because of the following informalities:
Claim 5 recites the following structures that are fuzzy and have an unclear functional group:
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The examiner requests the applicant include clearer structures in the claim. Appropriate correction is required.
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.
Claims 7 and 12-14 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite because the claim language is confusing. Applicant’s recite in claim 7, “the compound of claim 1 or claim 5”. However, claim 1, in which claim 7 depends on, recites the “compound having a structure of Formula II”, not just the “compound”. This is confusing and it is unclear which compound or subset of compounds applicant is referring to in claim 7, since applicant has not specifically referred to the “compound having a structure of Formula II”, as claimed in claim 1. The dependent claims are also rejected as being dependent on a rejected claim. Appropriate correction is required.
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 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 the AIA 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.
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, 7 and 12-14 are rejected under AIA 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by Balunas et al. (WO 2014/018913, pub date 01/30/2014), as evidenced by Rowe et al. (Handbook of Pharmaceutical Excipients, 5th Ed., Pharmaceutical Press, 2006).
Balunas et al. teaches the following reaction scheme on page 19:
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Balunas et al. shows in Scheme 4, step (c), (page 19) the synthesis of compound 21, (4-oxo-4-(phenethylamino)butyl ethylcarbamate):
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from compound 20, (methyl 4-((ethylcarbamoyl)oxy)butonate):
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in a two-step synthesis, steps (c)(1) and (c)(2). (see the “Reagents and Conditions”, Scheme 4, step (c), page 19).
Balunas et al. exemplifies the first step of the synthesis, step (c)(1), which describes compound 20, methyl 4-((ethylcarbamoyl)oxy)butonate, dissolved in tetrahydrofuran (THF), and reacted with the base LiOH, to hydrolyze the methoxy ester, which is then acidified to pH = 3, an acidic pH. (page 54, last paragraph, see synthesis of “4-Oxo-4-(phenethylamino)butyl ethylcarbamate” to page 55, first paragraph)
The resulting hydrolyzed intermediate product of step (c)(1) in Scheme 4 would give the following carboxylic acid intermediate: 4-[[(ethylamino)carbonyl]oxy]butanoic acid.
Balunas et al. further exemplifies the aqueous layer was then extracted into ethyl acetate, dried and recrystallized in ethyl acetate/hexane to give a white solid. (page 54, last paragraph, see synthesis of “4-Oxo-4-(phenethylamino)butyl ethylcarbamate” to page 55, first paragraph)
Again this white solid is the purified hydrolyzed carboxylic acid intermediate, 4-[[(ethylamino)carbonyl]oxy]butanoic acid, with the structure shown below:
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This reads on applicant’s compound when:
R = alkyl (ethyl)
With regard to applicant’s limitations in claims 13-14, the examiner interprets the dosing regimen as intended use limitations. Note that intended use of the composition is not accorded patentable weight.
With regard to applicant’s limitation in claim 12 for an excipient, since Balunas et al. teaches both the extraction and the recrystallization of the carboxylic acid intermediate, 4-[[(ethylamino)carbonyl]oxy]butanoic acid, is performed in ethyl acetate, this would read on the claim, since ethyl acetate is a well-known pharmaceutical excipient, with use as a flavor. (see Rowe et al., page 268 “ethyl acetate”, Section 7, “applications in pharmaceutical formulation or Technology”.
Therefore these claims are fully met.
Response to Arguments
Applicant’s arguments have been considered but are not persuasive for the following reasons:
The examiner acknowledges applicant’s amendment to the claims to overcome the 112 and 102 rejections.
The examiner has withdrawn these rejections and applied new a 112 and 102 rejection in this office action based on applicant’s amendments. Thus the examiner has applied Balunas et al. for a new 102 rejection to address the amended claims.
Conclusion
Claims 1, 7 and 12-14 are rejected and claim 5 is objected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jennifer Cho Sawyer whose telephone number is (571) 270 1690. The examiner can normally be reached on Monday-Friday 9 AM - 6 PM PST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Renee Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-274-1690.
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Jennifer Cho Sawyer
Patent Examiner
Art Unit: 1691
/RENEE CLAYTOR/Supervisory Patent Examiner, Art Unit 1691