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 .
Status of the Claims and Response to Restriction Requirement
Claims 1, 17, 33, 49, 65, 81, 97-100 and 105-119 are pending as of the response filed 03/18/2026. Applicant’s election of group I claims 1, 17, 33, 49, 65, 81, 97-98, 105, 108, 111, 114 and 117 without traverse is acknowledged. Claims 99-100, 106-107, 109-110, 112-113, 115-116 and 118-119 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant’s election of a species of compound of Formula I-A without traverse, shown below is acknowledged.
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Claims 1, 97 and 98 encompass the elected species. Claims 17, 33, 49, 65, 81, 105, 108, 111, 114 and 117 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Therefore, claims 1 and 97-98 have been examined to the extent to which they are readable on the above identified elected species.
The elected species was examined and was found to be free of prior art. Therefore, the examiner has extended the search to include the entire genus of compounds of the Formula I-A as in claim 1. The compounds of the Formula I-A as in instant claim 1 was found to be free of prior art.
The election of species requirement is as set forth in the Office action dated 12/23/2025 is reconsidered and withdrawn. All compound claims previously withdrawn from consideration as a result of the election of species requirement, i.e., claims 17, 33, 49, 65, 81, 105, 108, 111, 114 and 117, are rejoined and examined for patentability. Applicant’s submission of additional elected species of Formula II-A, Formula III-A, Formula IV-A, Formula V-A, Formula VI-A is acknowledged. The additional elected species and compounds of Formula II-A, Formula III-A, Formula IV-A, Formula V-A, Formula VI-A are free of prior art.
In view of the pending claims, the following rejections are made.
Information Disclosure Statement
The information disclosure statements submitted on 03/18/2026, 10/30/2025, 07/22/2025, 04/012025, 02/05/2025, 04/24/2024 and 02/01/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Rejections - 35 USC § 112 – Written Description
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 17, 33, 49, 65, 81, 97-98,105, 108, 111, 114 and 117 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claims recite compounds of Formula I-A as in claim 1, Formula II-A as in claim 17, Formula III-A as in claim 33, Formula IV-A as in claim 49, Formula V-A as in claim 65, Formula VI-A as in claim 81 or a pharmaceutically acceptable salt thereof. The core structure of the various genus of compounds claimed differ in the position of the fused A ring and presence or absence of the carbonyl group in the linker between the Z group and the N of the pyrrolidine ring of the macrocyclic ring. The instant specification teaches these macrocyclic compounds as having orexin-2 receptor agonistic activity (Pg. 2, Lns. 22-23 of instant specification).
The genus of compounds claimed encompass a highly divergent variety of core structures as defined by the fused ring A and variables E, G, L, M, J, Q, T, U, V, W, X, Y, R11, R14, R15, R16, R17 and R18 . The fused ring A is broadly recited to include C4-C8 cycloalkyl, a 4- to 7-membered heterocyclyl, or a 5- to 8-membered heteroaryl which may be further substituted. The instant specification defines the term “cycloalkyl”, “heterocyclyl” to include bicyclic structures that may be bridged or spirocyclic (Pg. 34, Lns. 7-28 of the instant specification). The instant specification defines the term “cycloalkyl”, “heteroaryl” to include an aromatic carbocyclic system containing 1-4 heteroatoms selected from N, O, and S having 1-3 rings wherein the rings may be fused. The variable E is defined to encompass a wide variety of unrelated functional groups chosen from H, hydroxyl, NRaRb, C(=O)NRaRb, C1-C3 alkylene-NRaRb, C1-C3 alkyl, alkenyl, C2-C4 alkynyl, C3-C8 cycloalkyl, C1-C3 alkylene-(C3-C8 cycloalkyl), 4- to 10-membered heterocyclyl, C1-C3 alkylene-(4- to 10-membered heterocyclyl), C6-C10 aryl, C1-C3 alkylene-(C6-C10 aryl), 5- to 10-membered heteroaryl, etc.. The compounds further include pharmaceutically acceptable salts thereof.
Therefore, the scope of the claims is extremely broad and the genus of compounds encompassed by the claims, includes species that do not share both a substantial structural feature and a common function that flows from the substantial feature. The different groups would be presumed by one of ordinary skill in the art to have different physical properties (e.g. solubility, stability, etc.) that would lead to different biological activities (e.g. ADME and PK/PD, efficacy, toxicity, etc.). However, the specification does not provide a reasonably representative disclosure of the compounds overall. Specifically, the specification discloses a handful of exemplary compound species of the invention, say, 22 compounds as recited in instant claim 97 (Pgs. 125-129, Table 1 of the instant specification), all drawn to wherein G is SO2 and E is a relatively simple substituent, C1 alkyl (methyl) or C1alkyl substituted with three halogens (CF3). The specification discloses synthesis and characterization of three exemplary compound species Compound 5, Compound 6 and Compound 10 (Pgs. 140-155, Example 1.1, 1.2 and 1.3 of the instant specification). The orexin-2 receptor activation assay (OX2R IP1 assay) for the exemplary compounds indicates that the EC50 value is impacted by a change in the size of the ring in going from a pyrrolidine to a piperidine ring (see Pgs. 156-157, Table 2 of the instant specification). This clearly indicates that changes to the structure impacts activity of the compound as an orexin type 2 receptor agonist.
Thus, these are not viewed as being reasonably representative of the genus in its claimed scope because no readily apparent combination of identifying characteristics is provided, other than the disclosure of those specific species as examples of the claimed genus. It is not readily apparent that the genus of compounds claimed have a structural entity in common, that leads to their orexin-2 receptor activation.
The MPEP lists factors that can be used to determine if sufficient evidence of possession has been furnished in the disclosure of the Application. Whether the specification shows that the inventor was in possession of the claimed invention is not a single, simple determination, but rather is a factual determination reached by considering a number of factors. Factors to be considered in determining whether there is sufficient evidence of possession include the level of skill and knowledge in the art, partial structure, physical and/or chemical properties, functional characteristics alone or coupled with a known or disclosed correlation between structure and function, and the method of making the claimed invention. Disclosure of any combination of such identifying characteristics that distinguish the claimed invention from other materials and would lead one of skill in the art to the conclusion that the applicant was in possession of the claimed species is sufficient. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. See MPEP 2163 (II) 3 (a) (i).
A chemical genus can be adequately described if the disclosure presents a sufficient number of representative species that encompass the genus. If the genus has substantial variance, the disclosure must describe a sufficient number of species to reflect the variation within that genus. The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice (see i)(A) above), reduction to drawings (see i)(B) above), or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the inventor was in possession of the claimed genus (see i)(C) above). See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406. A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014). The disclosure of only one species encompassed within a genus adequately describes a claim directed to that genus only if the disclosure "indicates that the patentee has invented species sufficient to constitute the gen[us]." See Enzo Biochem, 323 F.3d at 966, 63 USPQ2d at 1615. "A patentee will not be deemed to have invented species sufficient to constitute the genus by virtue of having disclosed a single species when … the evidence indicates ordinary artisans could not predict the operability in the invention of any species other than the one disclosed. See MPEP 2163 (II) 3 (a) (ii).
In the instant case, there is no evidence Applicants had possession of the full genus of compounds at the time of filing, because the specification does not conclusively demonstrate the structure-activity relationship of the claimed vast array of compounds, towards their orexin-2 receptor agonism activity. The instant specification does not describe enough species of compounds having the orexin-2 receptor activation function within the scope of the claimed invention. Thus, the written description requirement for the claimed genus of compounds has not been met.
In response to this rejection, the Applicant can amend the claim(s) to recite only individual species or grouping of species that share a substantial structure as well as a common function that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claim(s) in fact share a common function that flows from the substantial structural feature.
Claim Rejections - 35 USC § 112 - Enablement
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 33, 49, 65, 81, 97-98, 108, 111, 114 and 117 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a compound of Formula II-A or a pharmaceutically acceptable salt thereof, does not reasonably provide enablement for compound of Formula I-A or a pharmaceutically acceptable salt thereof, Formula III-A or a pharmaceutically acceptable salt thereof, Formula IV-A or a pharmaceutically acceptable salt thereof, Formula V-A or a pharmaceutically acceptable salt thereof and Formula VI-A or a pharmaceutically acceptable salt thereof. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
To be enabling, the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993). The determination that "undue experimentation” would have been needed to practice the claimed invention in full scope is not a single, simple factual determination.
As stated in the MPEP 2164.01(a), “There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." In re Wands, 8 USPQe2d 1400 (1988), factors to be considered in determining whether a disclosure meets the enablement requirement of 35 U.S.C. 112, first paragraph, have need described. They are:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
These factors are always applied against the background understanding that scope of enablement varies inversely with the degree of unpredictability involved. Keeping that in mind, the Wands factors are relevant to the instant application for the following reasons:
The breadth of the claims/The nature of the invention
The claims recite a fused bicyclic macrocyclic compounds of Formula I-A through VI-A or a pharmaceutically acceptable salt thereof, with variables as defined for use in the treatment of narcolepsy or cataplexy.
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The compounds encompass a vast array of compounds as recited in the definition of fused ring A and the variables E, G, L, M, J, Q, T, U, V, W, X, Y, R11, R14, R15, R16, R17 and R18 and further include a pharmaceutically acceptable salt thereof. Therefore, the scope of the claims is extensive. The nature of the invention is the evaluation of these vast array of macrocyclic compounds for their pharmacological activity as orexin type 2 receptor agonists.
The state of the prior art/The level of predictability in the art
Nagahara et al. (Design and Synthesis of Non-Peptide, Selective Orexin Receptor 2 Agonists, 12 August 2015, hereinafter Nagahara, in the IDS); Keinan et al. (Organic Synthesis: From Glorious Past to Brilliant Future, 22 February 2018, hereinafter Keinan); Collins et al. (Emac - a comparative index for the assessment of macrocyclization efficiency†, December 2012, hereinafter Collins).
Nagahara teaches screening chemical libraries and optimizing hit compounds to design and synthesize small-molecule, non-peptide selective orexin type 2 agonists (Pg. 7932, first column, second full paragraph). Nagahara teaches converting the hit compounds into tertiary sulfonamide derivatives resulted in a loss of activity, whereas secondary sulfonamides were necessary for maintaining or improving agonist potency (Pg. 7932, second column, continued paragraph, Figure 1). Nagahara teaches specific structural modifications and substituents are key to improving the orexin type 2 agonistic activity (Pg. 7932, second column, continued paragraph – Pg. 7933, second column, second full paragraph; Table 1).
Keinan highlights the key challenges facing the field of organic synthesis. Keinan states “Synthetic reactions must address four key types of selectivity. The most important is chemoselectivity, i.e., reactions must discriminate among all the bond types present in the substrates no matter how similar those bond types may be. While protecting groups can help with chemoselectivity, their use must be minimized to improve efficiency. Reactions must also be regioselective, i.e., the reaction must organize the substrates with respect to their orientation so that only one regioisomer is generated. Finally, a reaction must have stereocontrol, both on a relative basis (diastereoselectivity) and absolute basis (enantioselectivity). Stereocontrol currently stands out as among the most challenging aspects of synthesis.”
Collins teaches macrocycle-based drug design represents a compelling strategy for addressing challenging molecular targets, and an exciting new frontier in drug discovery (Abstract). Collins teaches significant synthetic challenges with respect to macrocycle synthesis (Pg. 1489, first column, last paragraph – second column, continued paragraph). Collins teaches a high dilution requirement to increase the chances of intramolecular cyclization while avoiding intermolecular oligomerization (Pg. 1489, first column, last paragraph). Collins highlights this strategy to be both highly inefficient and entirely impractical in a drug discovery setting, where slow reaction times and high solvent requirements are unacceptable from cost, capacity, and green chemistry perspectives (Pg. 1489, second column, continued paragraph). Collins further highlights that these challenges are amplified in the case of macrocycles at the lower end of the ring-size scale (e.g., 11-13 membered rings), where the strain in the macrocyclic product results in a slower macrocyclization rate and therefore a low yield of macrocycle compared to the product of the undesired, but less strained, intermolecular reaction (Pg. 1489, second column, first full paragraph).
Therefore, the state of the prior art indicates challenges with respect to the design and synthesis of small-molecule, selective orexin type 2 agonists, unpredictability with respect to organic synthesis, as well as significant hurdles in achieving high yields and scalability in the synthesis of macrocycles. This unpredictability is enhanced with respect to the preparation of the instantly claimed compounds to generate a complex product with multiple ring systems/fused rings.
Additionally, it is noted that the state of the art with regard to pharmacology is unpredictable. The field of pharmacology involves screening compounds both in vitro and in vivo to determine lead compounds that exhibit the desired pharmacological activity. According to MPEP 2164.03, “The amount of guidance or direction needed to enable the invention is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970).”, with physiological activity being considered to be an unpredictable factor.
Therefore, in consideration of the various challenges with regard to design and development of small molecule drugs, especially macrocycles at the lower end of the ring size (e.g., 11-13), it is unclear how the instant invention is enabled for the synthesis of the huge genus of macrocyclic compounds (with a ring size of 13) being claimed.
The level of one of ordinary skill in the art
The relative level of skill in the art is high, such as, a synthetic organic chemist, healthcare professionals such as, an neurologists and sleep medicine specialists with advanced educational degrees (e.g., M.D. and/or Ph.D.). Additionally, there is significant unpredictability in the art in the field of organic synthesis and lead optimization.
The amount of direction provided by the inventor/The existence of working examples
The specification discloses a handful of exemplary compound species of the invention, say, 22 compounds as recited in instant claim 97 (Pgs. 125-129, Table 1 of the instant specification), all drawn to wherein G is SO2 and E is a relatively simple substituent, C1 alkyl (methyl) or C1alkyl substituted with three halogens (CF3). The specification discloses synthesis and characterization of three exemplary compound species Compound 5, Compound 6 and Compound 10 (Pgs. 140-155, Example 1.1, 1.2 and 1.3 of the instant specification) (all directed to compounds of Formula II-A). The synthesis indicates low yields of 29.2% for Compound 5 (Pg. 155, Lns. 6-19 of instant specification) and 31.7% for Compound 6 (Pg. 154, Lns. 4-14 of instant specification). The claims are drawn to a vast variety of compounds of Formula I-A through VI-A or a pharmaceutically acceptable salt thereof, that comprise various substituents. The synthesis steps of the examples that exemplify compounds of Formula II-A, may not be directly applicable to the synthesis of the compounds of Formula I-A and Formula III-A through VI-A, wherein the compounds have the A ring fused in different positions and/or have a different linkers and a variety of substituents. Depending on the fusion site, the geometry of the resulting nucleus can create steric hindrances that prevent efficient macrocyclization. Thus, a PHOSITA would have to explore a broad range of experimental conditions including reagents, protecting groups, catalyst, reaction temperature, etc., to synthesize the myriad species of macrocyclic compounds being claimed.
The orexin-2 receptor activation assay (OX2R IP1 assay) for the exemplary compounds indicates that the EC50 value is impacted by a change in the size of the ring in going from a pyrrolidine to piperidine ring (see Pgs. 156-157, Table 2 of the instant specification). The specification does not indicate a specific value for the EC50 of the tested compounds towards orexin-2 receptor activation but simply a relative value denoted by “**” or “***”. Although the legend indicates “***” stands for an EC50 of <100nM and “**” stands for an EC50 value of 100-1000nM, there is no way to ascertain if the potency of the tested compounds are close in value or far apart. It is not readily apparent that the claimed vast array of compounds are all likely to exhibit orexin-2 receptor agonistic activity.
As illustrated above, the disclosure does not provide sufficient guidance to extrapolate the limited examples to making or using the recited vast array of compounds. Thus, there is lack of direction or guidance regarding making and using the full scope of compounds being claimed.
The quantity of experimentation needed
Drug development is inherently a burdensome endeavor that generally requires an exorbitant amount of experimentation over many years of focused research. While the rigorous research invested in the claimed invention is evident, a PHOSITA would,
nevertheless, be tasked with an undue burden of experimentation in order to (a) synthesize the array of compounds encompassed by the instant claims, (b) perform assay experiments to test the claimed compounds towards the desired activity of orexin-2 receptor agonism.
Considering the state of the art as discussed in the references above, high degree of unpredictability in the field of organic synthesis, challenges with macrocycle synthesis and scalability, and lack of sufficient guidance in the specification, one of ordinary skill in the art would be burdened with undue experimentation to practice the invention commensurate in scope with the claims.
Allowable Subject Matter
The compounds of Formula I-A through Formula VI-A, as in instant claims 1, 17, 33, 49, 65 and 81 have been found to be free of prior art. Except for the 35 U.S.C. 112(a) rejections, all examined compound claims would be allowable.
The following is a statement of reasons for the indication of allowable subject matter:
The examined claims of the instant application relates to a compound of general Formula I-A through Formula VI-A, or a pharmaceutically acceptable salt thereof as in instant claims 1, 17, 33, 49, 65 and 81 and pharmaceutical compositions thereof.
The closest prior art of record is Bogen et al. (WO 2020/167706 A1, 20 August 2020, hereinafter Bogen, in the IDS) and Fujimoto et al. (WO 2017/135306 A1, 10 August 2017, hereinafter Fujimoto, in the IDS).
Bogen teaches 5-alkyl pyrrolidine orexin receptor agonists useful in the treatment of neurological and psychiatric disorders and diseases (Abstract). Bogen teaches compounds of formula I, with variables as defined (Pg. 2, Ln. 1 – Pg. 4, Ln. 9).
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Bogen teaches an exemplary compound, compound 20 shown below (Pg. 82, Lns. 10-15).
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Compound 20 of Bogen partially overlaps in scope with the instant compounds wherein E is C1 alkyl (methyl); G is S(=O)2; n is 1, R17 and R18 are each H; T is CR1R2, R1 and R2 are each H; W is CR4R5, R4 and R5 are each H; U is C64R7, R6 and R7 are each H; X is CR8R9, R8 and R9 are each H; V is CR3, R3 is H; R11 is H; J and L are each C; M is CR19, R19 is H; Q is CR20, R20 is H. However, Bogen does not teach the A ring or the macrocycle, as instantly claimed.
Fujimoto teaches substituted piperidine compounds having orexin type 2 receptor agonistic activity useful in the treatment of narcolepsy (Abstract). Fujimoto teaches compounds of formula I, with variables as defined (Paras. [0019]-[0020]).
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Fujimoto teaches an exemplary compound, compound 30 shown below (Para. [0192]).
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Compound 30 of Fujimoto partially overlaps in scope with the instant compounds wherein E is C1 alkyl (methyl); G is S(=O)2; n is 2, R17 and R18 are each H; T is CR1R2, R1 and R2 are each H; W is CR4R5, R4 and R5 are each H; U is C64R7, R6 and R7 are each H; X is CR8R9, R8 and R9 are each H; V is CR3, R3 is H; R11 is H; J and L are each C; M is CR19, R19 is H; Q is CR20, R20 is H. However, Fujimoto does not teach the A ring or the macrocycle, as instantly claimed.
The prior art of record does not teach or suggest the compounds of the instant invention. Therefore, the compounds of Formula I-A through Formula VI-A are novel and non-obvious over the compounds taught in the prior art.
Miscellaneous
While maintaining the restriction requirement, the examiner would like to bring Applicant’s attention to the following:
In withdrawn claim 115, line 2, the limitation “a compound of 65” should read “a compound of claim 65”.
In withdrawn claim 118, line 2, the limitation “a compound of 81” should read “a compound of claim 81”.
Conclusion
Claims 1, 17, 33, 49, 65, 81, 97-98,105, 108, 111, 114 and 117 are rejected.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PADMAJA S RAO whose telephone number is (571)272-9918. The examiner can normally be reached 9:00-5:30pm EDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney L Klinkel can be reached on (571) 270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PADMAJA S RAO/Examiner, Art Unit 1627
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