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
The present application claims priority to the application, 63/357,790, with effective filing date of 6 July 2022.
Claim Status
This Office Action is in response to Applicant’s Response to Restriction filed, 12 February 2026.
Applicant’s election without traverse of Group I (claims 1-7, 9, 12-17, 20-22, and 29) in the reply filed on 12 February 2026 is acknowledged.
Claims 30-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as
being drawn to a nonelected group (Group II: claims 30-31), there being no allowable generic or linking claim.
Election was made without traverse in the reply filed on 12 February 2026.
Information Disclosure Statement
The Information Disclosure Statements filed on 10 Nov 2023, 12 Aug 2024, and 12 Feb 2026 and the references cited therein have been considered, unless indicated otherwise.
The references, wherein a duplicate listing was provided, are lined through. Thus, the duplicate listing of U.S. Pre-grant Publication 2022/0135567 is lined through.
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.
1. Claims 2-3, 5-6, 12-13, 15-16, and 20-21 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.
Claim 2 recites an XRPD pattern substantially the same as shown in Figure 1, a TGA substantially similar to the one set forth in Figure 2, and a DSC thermogram substantially similar to the one set forth in Figure 2. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Additionally, where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience." Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993). See MPEP § 2173.05(s). Because claim 2 refers to Figures 1 and 2 and claims the XRPD pattern (or TGA or DSC thermogram) is substantially as shown, it is ambiguous as to which exact peaks of the XRPD diffractogram (or TGA or DSC thermogram) Applicant considers part of the claimed invention and what degree of similarity would infringe.
Similarly, claims 3, 5-6, 12-13, 15-16, and 20-21 specify an XRPD diffractogram, TGA thermogram, or DSC thermogram is substantially as shown, and thus, claims 3, 5-6, 12-13, 15-16, and 20-21 are ambiguous as to which exact peaks of the diffractogram or thermogram Applicant considers part of the invention and what degree of similarity would infringe.
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.
2. Claim 1 and 29 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mohan (US 2021/0139486, published 13 May 2021, see IDS filed 11/10/2023) as evidenced by Gardner (Computers and Chemical Engineering, 2004, 28, 943-953).
Mohan teaches Tyk2 pseudokinase ligands (abstract).
Mohan specifically teaches Compound 5:
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(Example 4, page 50, [0330]), which is Compound 1 of the claimed invention. Further, Compound 5 has IUPAC name: 1-(5-((7-fluoro-2,3-dihydrobenzo[b][1,4]dioxin-5-yl)amino)-7-(methylamino)pyrazolo[1,5-a]pyrimidin-3-yl)-3-((1R,2S)-2-fluorocyclopropyl)urea. Mohan specifically teaches that Compound 5 is obtained as a yellow powder. Additionally, Mohan teaches pharmaceutical salts of the compounds therein, which includes salts formed from acids, such as benzanoates ([0104]). Mohan also teaches recrystallization of the compounds therein ([0274]). Mohan also teaches pharmaceutical compositions of the compounds therein ([0146]).
Regarding claim 1, Mohan teaches the synthesis of Compound 5:
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(Example 4, page 50, [0330]-[0334]). While Mohan is silent to if Compound 5 is crystalline, the Examiner cannot determine whether or not Mohan inherently possesses properties which would anticipate or render obvious the claimed invention, because a solid can be crystalline, as evidenced by Gardner. Gardner teaches high throughput techniques to evaluating crystals via utilization of optical imaging and in situ Raman spectroscopy to characterize a large number of solid forms (page 948, paragraph 2). Further, Gardner specifies that almost without exception, small molecular weight drugs are isolated as crystalline materials principally for two reasons: purity and reproducibility (page 944, paragraph 2). Thus, as Mohan discloses that Compound 5 is a yellow powder, this can be reasonably interpreted to be a crystalline solid, which inherently must be one of Form 1, Form 2, or Form 3. While the Office does not have the facilities to synthesize and characterize a crystal of Compound 5 of Mohan to assign which polymorph it would be, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Products of identical chemical composition cannot have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Thus, it is reasonable to infer that the crystal of Compound 5 of Mohan is one of Form 1, Form 2, or Form 3. Accordingly, Mohan teaches a crystalline form of Compound 1:
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(1-(5-((7-fluoro-2,3-dihydrobenzo[b][1,4]dioxin-5-yl)amino)-7-(methylamino)pyrazolo[1,5-a]pyrimidin-3-yl)-3-((1R,2S)-2-fluorocyclopropyl)urea).
Regarding claim 29, Mohan teaches pharmaceutical compositions of the compounds therein and Compound 5 ([0146]).
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.
3. Claim(s) 1 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Mohan (US 2021/0139486, published 13 May 2021, see IDS filed 11/10/2023) in view of Morissette (Adv. Drug Delivery Rev., 2004, 56, 275-300).
Mohan teaches Tyk2 pseudokinase ligands (abstract).
Mohan specifically teaches Compound 5:
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(Example 4, page 50, [0330]), which is Compound 1 of the claimed invention. Further, Compound 5 has IUPAC name: 1-(5-((7-fluoro-2,3-dihydrobenzo[b][1,4]dioxin-5-yl)amino)-7-(methylamino)pyrazolo[1,5-a]pyrimidin-3-yl)-3-((1R,2S)-2-fluorocyclopropyl)urea. Additionally, Mohan teaches pharmaceutical salts of the compounds therein, which includes salts formed from acids, such as benzanoates ([0104]). Mohan also teaches pharmaceutical compositions of the compounds therein ([0146]).
Regarding claim 1, if Compound 5 of Mohan is not a crystalline form, then Mohan fails to teach a crystalline form of Compound 1.
Morissette teaches a high throughput method of generating polymorphs (crystals) of active pharmaceutical ingredients (abstract). Morissette teaches that multiple forms of active pharmaceutical ingredients exist and that each form displays unique physiochemical properties that can profoundly influence the bioavailability, manufacturability purification, stability, and other performance characteristics of the drug (page 276, column 1, paragraph 1). Morissette further teaches that most active pharmaceutical ingredients are purified and isolated by crystallization from an appropriate solvent during the final step in the synthetic process and that a large number of factors can influence crystal nucleation and growth during this process, including composition of the crystallization medium and process(es) used to generate supersaturation and promote crystallization (page 276, column 2, paragraph 2). Morissette then specifies that high throughput crystallization systems have been developed to more rapidly and comprehensively explore the multiparameter space that contributes to solid form diversity (page 278, column 2, paragraph 2). Morissette further teaches the generation of polymorphs of acetaminophen using a 96-well plate system (e.g. Form III of acetaminophen), while previously, the crystal structure of Form III of acetaminophen was proposed 20 years after it was observed in 1982 by thermal microscopy (page 288, column 1, paragraph 2; page 289, column 1, paragraph 3). Further, Morissette teaches utilizing high throughput crystallization experiments to generate polymorphs of MK-996: over 1500 discrete recrystallization trials from a set of 21 solvents or solvent mixtures yielded 186 solids, which were harvested over a period of 7 days, and produced at least 18 distinct forms (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Additionally, Morissette teaches that pharmaceutical companies currently use high throughput screening of polymorphs to save time and reduce costs (page 288, column 1, paragraph 1). Thus, Morissette teaches that high throughput screening produces many polymorphs in a short period of time.
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention to select the compound of Mohan and the method of Morissette to arrive at instant claim 1 (Compound 1:
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). One of ordinary skill in the art would have been motivated to make such a selection, with a reasonable expectation of success, because:
-Mohan teaches Tyk2 pseudokinase ligands,
-Mohan specifically teaches Compound 5:
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, which is Compound 1 of the claimed invention,
-Mohan teaches pharmaceutical salts of the compounds therein, which includes salts formed from acids, such as benzoates,
-Mohan also teaches pharmaceutical compositions of the compounds therein,
-Morissette teaches a high throughput method of generating polymorphs (crystals) of active pharmaceutical ingredients,
-Morissette teaches that multiple forms of active pharmaceutical ingredients exist and that each form displays unique physiochemical properties that can profoundly influence the bioavailability, manufacturability purification, stability, and other performance characteristics of the drug,
-Morissette teaches that most active pharmaceutical ingredients are purified and isolated by crystallization from an appropriate solvent during the final step in the synthetic process and that a large number of factors can influence crystal nucleation and growth during this process, including composition of the crystallization medium and process(es) used to generate supersaturation and promote crystallization,
-Morissette teaches that high throughput crystallization systems have been developed to more rapidly and comprehensively explore the multiparameter space that contributes to solid form diversity,
-Morissette teaches the generation of polymorphs of acetaminophen using a 96-well plate system (e.g. Form III of acetaminophen), while previously, the crystal structure of Form III of acetaminophen was proposed 20 years after it was observed in 1982 by thermal microscopy,
-Morissette teaches utilizing high throughput crystallization experiments to generate polymorphs of MK-996: over 1500 discrete recrystallization trials from a set of 21 solvents or solvent mixtures yielded 186 solids, which were harvested over a period of 7 days, and produced at least 18 distinct forms,
-Morissette teaches that pharmaceutical companies currently use high throughput screening of polymorphs to save time and reduce costs, and
-Morissette teaches that high throughput screening produces many polymorphs in a short period of time.
Thus, an artisan having ordinary skill in the art would have been motivated to make such a selection to predictably arrive at a crystalline compound of Compound 1:
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.
Regarding claim 29, Mohan teaches pharmaceutical compositions of the compounds therein and Compound 5 ([0146]). Further, Mohan teaches Compound 5:
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(Example 4, page 50, [0330]). Morissette teaches a high throughput method of generating polymorphs (crystals) of active pharmaceutical ingredients (abstract). Accordingly, the combination of Mohan and Morissette teaches a pharmaceutical composition of the crystalline form of Compound 1:
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.
4. Claim(s) 2-7, 9, 12-17, and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Mohan (US 2021/0139486, published 13 May 2021, see IDS filed 11/10/2023) and Morissette (Adv. Drug Delivery Rev., 2004, 56, 275-300) as applied to claims 1 and 29 above, and further in view of Bastin (OPRD, 2000, 4, 427-435, see IDS filed 11/10/2023) as evidenced by Wikipedia (“Adipic acid,” Wikipedia, 2021, <http://web.archive.org/web/20210425233055/https://en.wikipedia.org/wiki/Adipic_acid>, accessed 26 Mar 2026) and Wikipedia 2 (“Caproic acid,” Wikipedia, 2021, <http://web.archive.org/web/20210406001857/https://en.wikipedia.org/wiki/Caproic_acid>, accessed 26 Mar 2026).
Mohan (US 2021/0139486, published 13 May 2021, see IDS filed 11/10/2023) and Morissette (Adv. Drug Delivery Rev., 2004, 56, 275-300) are applied as discussed in the 35 U.S.C. § 103 rejection above.
Regarding claim 2, while the combination of Mohan and Morissette teaches a crystalline salt of Compound 1, wherein one of skill in the art would use the high throughput screening technology as described by Morissette to produce many polymorphs in a short period of time (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1) and thus access a polymorph having Form 1: (1) an XRPD of 7.0° 2-theta, 9.3° 2-theta, 14.0° 2-theta, 21.1° 2-theta, 24.9° 2-theta, and 25.6 ° 2-theta; (2) a TGA wherein the thermogram comprises the peaks set forth in Figure 2; (3) a DSC thermogram with an exotherm having an onset at about 200 °C; and (4) non-hygroscopic, they differ from that of the instantly claimed invention in that they do not explicitly teach an adipate (adipic) salt.
It would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the instantly claimed invention to exemplify the crystalline compound of Mohan and Morissette with the salt of Bastin as evidenced by Wikipedia 1 and 2 to arrive at the instantly claimed invention.
One of ordinary skill in the art would have been motivated to make such a selection, with a reasonable expectation of success, because Bastin teaches some of the most frequently used salts, such as fatty acids, and specifically names hexanoate (page 428, column 2, paragraph 3; Table 1, page 428). While Bastin does not specifically name adipate (or adipic acid or hexanedioate), hexanedioate differs from hexanoate via an extra carboxylic acid, as evidenced by Wikipedia 1 and 2 (Wikipedia 1: page 1, paragraph 1; side box; Wikipedia 2: page 1, paragraph 1; side box). Further, Wikipedia 1 teaches that adipic acid is a fatty acid (page 2, paragraph 5). Bastin teaches that salt selection provides the opportunity to modify characteristics of the potential drug substance (abstract). Bastin teaches that salts are most commonly employed for modifying aqueous solubility and that they also influence melting point, hygroscopicity, chemical stability, dissolution rate, solution pH, crystal form, and mechanical properties (abstract). Bastin further teaches the development of a microplate technique for salt screening, which also gives preliminary information on solvates and hydrates, especially if DSC and TGA are also used in the evaluation process (page 428, column 1, paragraphs 2-3). Thus, Bastin teaches a hexanedioate salt. Accordingly, Bastin teaches a crystalline adipate salt of Compound 1 having Form 1: (1) an XRPD of 7.0° 2-theta, 9.3° 2-theta, 14.0° 2-theta, 21.1° 2-theta, 24.9° 2-theta, and 25.6 ° 2-theta; (2) a TGA wherein the thermogram comprises the peaks set forth in Figure 2; (3) a DSC thermogram with an exotherm having an onset at about 200 °C; and (4) non-hygroscopic, they differ from that of the instantly claimed invention in that they do not explicitly teach an adipate (adipic) salt.
Regarding claim 3, Morisette teaches that high throughput screening produces many polymorphs in a short period of time (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Thus, one or ordinary skill in the art would use the high throughput screening technology as described by Morissette to access a polymorph of Form 1, wherein the XRPD pattern has peaks: 7.0° 2-theta, 9.3° 2-theta, 14.0° 2-theta, 21.1° 2-theta, 24.9° 2-theta, and 25.6 ° 2-theta.
Regarding claim 4, Morissette teaches that high throughput screening produces many polymorphs in a short period of time (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Thus, one or ordinary skill in the art would use the high throughput screening technology as described by Morissette to access a polymorph of Form 1, wherein the XRPD pattern has peaks: 7.0° 2-theta, 9.3° 2-theta, 14.0° 2-theta, 21.1° 2-theta, 24.9° 2-theta, and 25.6 ° 2-theta.
Regarding claim 5, Morissette teaches that high throughput screening produces many polymorphs in a short period of time (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Thus, one or ordinary skill in the art would use the high throughput screening technology as described by Morissette to access a polymorph of Form 1, wherein the TGA comprises the peaks set forth in Figure 2.
Regarding claim 6, Morissette teaches that high throughput screening produces many polymorphs in a short period of time (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Thus, one or ordinary skill in the art would use the high throughput screening technology as described by Morissette to access a polymorph of Form 1, wherein the DSC thermogram has an exotherm having an onset at about 200 °C.
Regarding claim 7, Morissette teaches that high throughput screening produces many polymorphs in a short period of time (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Thus, one or ordinary skill in the art would use the high throughput screening technology as described by Morissette to access a polymorph of Form 1, wherein the DSC thermogram has an exotherm having an onset at about 200 °C.
Regarding claim 9, Morissette teaches that high throughput screening produces many polymorphs in a short period of time (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Thus, one or ordinary skill in the art would use the high throughput screening technology as described by Morissette to access a polymorph of Form 1, wherein (1) the XRPD pattern has peaks: 7.0° 2-theta, 9.3° 2-theta, 14.0° 2-theta, 21.1° 2-theta, 24.9° 2-theta, and 25.6 ° 2-theta; (2) the TGA comprises the peaks set forth in Figure 2; (3) the DSC thermogram has an exotherm having an onset at about 200 °C; and (4) non-hygroscopic.
Regarding claim 12, Morissette teaches that high throughput screening produces many polymorphs in a short period of time (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Thus, one or ordinary skill in the art would use the high throughput screening technology as described by Morissette to access a polymorph of Form 2, wherein (1) the XRPD pattern has peaks: 7.0° 2-theta, 9.3° 2-theta, 13.3° 2-theta, 13.8° 2-theta, 18.3° 2-theta, 18.8° 2-theta, 20.6° 2-theta, 21.2° 2-theta, and 25.6° 2-theta; (2) the TGA comprises the peaks set forth in Figure 4; (3) the DSC thermogram has an exotherm having an onset at about 194 °C; and (4) non-hygroscopic.
Regarding claim 13, Morissette teaches that high throughput screening produces many polymorphs in a short period of time (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Thus, one or ordinary skill in the art would use the high throughput screening technology as described by Morissette to access a polymorph of Form 2, wherein the XRPD pattern has peaks: 7.0° 2-theta, 9.3° 2-theta, 13.3° 2-theta, 13.8° 2-theta, 18.3° 2-theta, 18.8° 2-theta, 20.6° 2-theta, 21.2° 2-theta, and 25.6° 2-theta.
Regarding claim 14, Morissette teaches that high throughput screening produces many polymorphs in a short period of time (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Thus, one or ordinary skill in the art would use the high throughput screening technology as described by Morissette to access a polymorph of Form 2, wherein the XRPD pattern has peaks: 7.0° 2-theta, 9.3° 2-theta, 13.3° 2-theta, 13.8° 2-theta, 18.3° 2-theta, 18.8° 2-theta, 20.6° 2-theta, 21.2° 2-theta, and 25.6° 2-theta.
Regarding claim 15, Morissette teaches that high throughput screening produces many polymorphs in a short period of time (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Thus, one or ordinary skill in the art would use the high throughput screening technology as described by Morissette to access a polymorph of Form 2, wherein the TGA comprises the peaks set forth in Figure 4.
Regarding claim 16, Morissette teaches that high throughput screening produces many polymorphs in a short period of time (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Thus, one or ordinary skill in the art would use the high throughput screening technology as described by Morissette to access a polymorph of Form 2, wherein the DSC thermogram has an exotherm having an onset at about 194 °C.
Regarding claim 17, Morissette teaches that high throughput screening produces many polymorphs in a short period of time (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Thus, one or ordinary skill in the art would use the high throughput screening technology as described by Morissette to access a polymorph of Form 2, wherein the DSC thermogram has an exotherm having an onset at about 194 °C.
Regarding claim 20, Morissette teaches that high throughput screening produces many polymorphs in a short period of time (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Thus, one or ordinary skill in the art would use the high throughput screening technology as described by Morissette to access a polymorph of Form 3, wherein (1) the XRPD pattern has peaks: 5.9° 2-theta, 6.9° 2-theta, 8.9° 2-theta, 9.2° 2-theta, 11.7° 2-theta, 13.8° 2-theta, 17.9° 2-theta, 20.9° 2-theta, 21.9° 2-theta, 24.8° 2-theta, 25.8° 2-theta; (2) the TGA comprises the peaks set forth in Figure 6; and (3) the DSC thermogram has a first exotherm having an onset at 133 °C and a second exotherm having an onset at 177 °C.
Regarding claim 21, Morissette teaches that high throughput screening produces many polymorphs in a short period of time (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Thus, one or ordinary skill in the art would use the high throughput screening technology as described by Morissette to access a polymorph of Form 3, wherein the XRPD pattern has peaks: 5.9° 2-theta, 6.9° 2-theta, 8.9° 2-theta, 9.2° 2-theta, 11.7° 2-theta, 13.8° 2-theta, 17.9° 2-theta, 20.9° 2-theta, 21.9° 2-theta, 24.8° 2-theta, 25.8° 2-theta.
Regarding claim 22, Morissette teaches that high throughput screening produces many polymorphs in a short period of time (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Thus, one or ordinary skill in the art would use the high throughput screening technology as described by Morissette to access a polymorph of Form 3, wherein the XRPD pattern has peaks: 5.9° 2-theta, 6.9° 2-theta, 8.9° 2-theta, 9.2° 2-theta, 11.7° 2-theta, 13.8° 2-theta, 17.9° 2-theta, 20.9° 2-theta, 21.9° 2-theta, 24.8° 2-theta, 25.8° 2-theta.
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.
5. Claims 1 and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 16, and 19 of U.S. Patent No. 11,753,411 in view of Morissette (Adv. Drug Delivery Rev., 2004, 56, 275-300). Although the claims at issue are not identical, they are not patentably distinct from each other.
U.S. Patent No. 11,753,411 claims a compound of Formula (I):
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and specifically teaches Compound 1:
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(claims 1 and 19). Further ‘411 teaches a pharmaceutical composition (claim 16).
Regarding claim 1, ‘411 fails to teach a crystalline form of Compound 1.
Morissette teaches a high throughput method of generating polymorphs (crystals) of active pharmaceutical ingredients (abstract). Morissette teaches that multiple forms of active pharmaceutical ingredients exist and that each form displays unique physiochemical properties that can profoundly influence the bioavailability, manufacturability purification, stability, and other performance characteristics of the drug (page 276, column 1, paragraph 1). Morissette further teaches that most active pharmaceutical ingredients are purified and isolated by crystallization from an appropriate solvent during the final step in the synthetic process and that a large number of factors can influence crystal nucleation and growth during this process, including composition of the crystallization medium and process(es) used to generate supersaturation and promote crystallization (page 276, column 2, paragraph 2). Morissette then specifies that high throughput crystallization systems have been developed to more rapidly and comprehensively explore the multiparameter space that contributes to solid form diversity (page 278, column 2, paragraph 2). Morissette further teaches the generation of polymorphs of acetaminophen using a 96-well plate system (e.g. Form III of acetaminophen), while previously, the crystal structure of Form III of acetaminophen was proposed 20 years after it was observed in 1982 by thermal microscopy (page 288, column 1, paragraph 2; page 289, column 1, paragraph 3). Further, Morissette teaches utilizing high throughput crystallization experiments to generate polymorphs of MK-996: over 1500 discrete recrystallization trials from a set of 21 solvents or solvent mixtures yielded 186 solids, which were harvested over a period of 7 days, and produced at least 18 distinct forms (page 289, column 2, paragraph 3; page 290, column 1, paragraph 1). Additionally, Morissette teaches that pharmaceutical companies currently use high throughput screening of polymorphs to save time and reduce costs (page 288, column 1, paragraph 1). Thus, Morissette teaches that high throughput screening produces many polymorphs in a short period of time.
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the instantly claimed invention to select the compound of ‘411 and the method of Morissette to arrive at instant claim 1 (Compound 1:
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). One of ordinary skill in the art would have been motivated to make such a selection, with a reasonable expectation of success, because:
-‘411 teaches Tyk2 psuedokinase ligands,
-‘411 specifically teaches
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, which is Compound 1 of the claimed invention,
-‘411 teaches pharmaceutical salts of the compounds therein, which includes salts formed from acids, such as benzanoates,
-‘411 also teaches pharmaceutical compositions of the compounds therein,
-Morissette teaches a high throughput method of generating polymorphs (crystals) of active pharmaceutical ingredients,
-Morissette teaches that multiple forms of active pharmaceutical ingredients exist and that each form displays unique physiochemical properties that can profoundly influence the bioavailability, manufacturability purification, stability, and other performance characteristics of the drug,
-Morissette teaches that most active pharmaceutical ingredients are purified and isolated by crystallization from an appropriate solvent during the final step in the synthetic process and that a large number of factors can influence crystal nucleation and growth during this process, including composition of the crystallization medium and process(es) used to generate supersaturation and promote crystallization,
-Morissette teaches that high throughput crystallization systems have been developed to more rapidly and comprehensively explore the multiparameter space that contributes to solid form diversity,
-Morissette teaches the generation of polymorphs of acetaminophen using a 96-well plate system (e.g. Form III of acetaminophen), while previously, the crystal structure of Form III of acetaminophen was proposed 20 years after it was observed in 1982 by thermal microscopy,
-Morissette teaches utilizing high throughput crystallization experiments to generate polymorphs of MK-996: over 1500 discrete recrystallization trials from a set of 21 solvents or solvent mixtures yielded 186 solids, which were harvested over a period of 7 days, and produced at least 18 distinct forms,
-Morissette teaches that pharmaceutical companies currently use high throughput screening of polymorphs to save time and reduce costs, and
-Morissette teaches that high throughput screening produces many polymorphs in a short period of time.
Thus, an artisan having ordinary skill in the art would have been motivated to make such a selection to predictably arrive at a crystalline compound of Compound 1:
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.
Regarding claim 29, ‘411 teaches pharmaceutical compositions of the compounds therein (claim 16). Further, Mohan teaches the compound,
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(claim 19). Morissette teaches a high throughput method of generating polymorphs (crystals) of active pharmaceutical ingredients (abstract). Accordingly, the combination of ‘411 and Morissette teaches a pharmaceutical composition of the crystalline form of Compound 1:
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.
Conclusion
No claim is allowed.
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/MADELINE M. DEKARSKE/Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622
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