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 Application
Claims 1-18 are pending in the application. Claims 1-18 are examined herein.
In view of the pending claims, the following objections and rejections are made, as discussed below.
Priority
This application is a CON of PCT/CN2022/101788 filed 06/28/2022 and claims foreign priority to CHINA 202110721322.5 filed 06/28/2021.
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in China on 06/28/2021. It is noted, however, that applicant has not filed a certified copy of the CHINA 202110721322.5 application as required by 37 CFR 1.55.
According to MPEP 2304.01(c), “A certified translation of every foreign benefit application or Patent Cooperation Treaty (PCT) application not filed in English is required. See 35 U.S.C. 119(b)(3) and 372(b)(3) and 37 CFR 1.55(g)(3)(i) and 41.154(b). If no certified translation is in the official record for the application, the examiner must require the applicant to file a certified translation. The applicant should provide the required translation if applicant wants the application to be accorded benefit of the non-English language application. Any showing of priority that relies on a non-English language application is prima facie insufficient if no certified translation of the application is on file. See 37 CFR 41.154(b) and 41.202(e).
It is noted that Applicants have not provided an English translation of the certified copy of the foreign priority application as required by 35 U.S.C. 119(b).
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action, 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English applications.
Accordingly, instant claims 1-18 have been afforded an effective filing date of 06/28/2022 since the subject matter of the claims are supported by PCT/CN2022/101788 filed 06/28/2022.
Information Disclosure Statement
The information disclosure statement submitted on 12/28/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112 - Enablement
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 17-18 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 method of treating cervical cancer, breast cancer, melanoma, lung cancer and bone marrow cancer in a patient by administering the nitrogen-containing polycyclic aromatic compounds, does not reasonably provide enablement for treating and/or preventing all tumors in a patient. 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. This is a scope of enablement rejection.
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 method of preventing and/or treating a tumor, the method comprises: administering the nitrogen-containing polycyclic aromatic compound and a pharmaceutically acceptable salt thereof according to claim 1 as active ingredients to a patient”. Given the broadest reasonable interpretation, the limitation “tumor” can encompass cancers of any kind and origin and further include both primary and metastatic tumors. The specification does not provide a limiting definition of the term “tumor“. Therefore, the scope of the conditions being treated by the method claims is extensive, and encompass not only alleviating but also preventing each and every type of cancer.
The state of the prior art/The level of predictability in the art
Lovly et al. (Tumor Heterogeneity and Therapeutic Resistance, 2016, hereinafter Lovly); Serrano et al. (Therapeutic cancer prevention: achievements and ongoing challenges – a focus on breast and colorectal cancer, 21 February 2019, hereinafter Serrano).
Lovly teaches tumor heterogeneity encompasses more than just the clinical picture and can represent both intratumor and intertumor differences (Abstract). Lovly teaches tumor heterogeneity is not one distinct term but rather encompasses several facets – within a disease, within a patient and within a tumor itself - that render tumors unique (Pg. e585, first column, last paragraph; Pg. e591, second column, first full paragraph). Lovly teaches ongoing challenges include the accurate and timely assessment of genetic changes as well as the development of resistance and the resultant compensatory mechanisms (Abstract; Pg. e586, second column, second full paragraph). Lovly, highlights the complexity of tumor heterogeneity in clinical decision making (e589-e590, case studies) and emphasizes that the need to understand the underlying causes of this heterogeneity and development of resistance, to effect better treatment outcomes (Pg. e591, second column, first full paragraph; Pg. e590, first column, first paragraph).
Serrano teaches the lack of an objective marker to target with preventive cancer therapies makes it more difficult for physicians to advise, and for candidates to undergo, treatment without a measurable outcome, particularly as they may not themselves experience a benefit but could suffer side effects (Pg. 587, first column, first full paragraph). Serrano teaches effects on cancer occurrence, as the definite endpoint, can take decades to evaluate (Pg. 580, second column, continued paragraph).
Therefore, the state of the prior art indicates significant variability found within and between tumors is a major contributor to treatment failure and cancer recurrence in patients. It is also clear that cancer prevention is not well-established or predictable in consideration of the art.
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 high level of unpredictability in the field of cancer treatment/prevention, it is unclear how the instantly claimed method would achieve the intended result of treatment/prevention of any and all types of tumors, considering that different types of cancers have different etiologies with unique genetic/proteomic profiles requiring targeted therapies.
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 oncologist, or molecular biologist with advanced educational degrees (e.g., M.D. and/or Ph.D.). Additionally there is significant unpredictability in the art regarding the development of therapies, due to the heterogenous nature of cancers.
The amount of direction provided by the inventor/The existence of working examples
Applicants have provided biochemical assays supporting the anti-tumor activity of the nitrogen-containing polycyclic aromatic compounds of Formula I being comparable to cisplatin towards the growth of cancer cell lines including, cervical cancer, breast cancer, melanoma, lung cancer and bone marrow cancer (Para. [0020]; Paras. [0095]-[0117]; Tables 1-3). However, the disclosure does not indicate how the disclosed data correlates with the treatment of all types of tumors, including prevention. There is lack of direction or guidance regarding, treatment/prevention of all types of tumors by administering the nitrogen-containing polycyclic aromatic compounds of the instant claims. One of ordinary skilled in the art would not be able to practice the method of the instant claims to achieve the intended result of preventing and/or treating all tumor types, as instantly claimed.
The quantity of experimentation needed
Considering the state of the art as discussed above, particularly with regards to the high degree of unpredictability in the art with respect to treating various tumors and the lack of guidance provided 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.
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 15-16 and 18 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.
Regarding claim 15, the claim recites “Use of the nitrogen-containing polycyclic aromatic compound according to claim 1 in the preparation of an anti-tumor drug”.
It is unclear if the claim is directed to a method of using the nitrogen-containing polycyclic aromatic compound according to claim 1, as an anti-tumor drug OR if the claim is directed to a process of preparation of the nitrogen-containing polycyclic aromatic compound according to claim 1, for use as an anti-tumor drug.
According to MPEP 2173.05(q), “Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
Therefore, the metes and bounds of the claim are indefinite.
Claim 16 depends from claim 15, and is similarly rejected.
For the purpose of applying prior art, claims 15-16 have been interpreted as directed to a product. “The nitrogen-containing polycyclic aromatic compound according to claim 1, for use as an anti-tumor drug”; “The compound according to claim 15, wherein the compound exhibits inhibitory activity against cervical cancer cells, breast cancer cells, melanoma cells, lung cancer cells, and bone marrow cancer cells, ” (supported by Paras. [0033]-[0034] of the instant specification).
Regarding claim 18, the claim recites “wherein the tumor comprises at least one of cervical cancer, breast cancer, melanoma, lung cancer and bone marrow cancer”. The recitation of the open-ended phrase “comprises” renders the claim indefinite. It is unclear as to what other tumors are included within the scope of the claim. Therefore, the metes and bounds of the claim are indefinite.
For the purpose of applying prior art, claim 18 has been interpreted as “wherein the tumor [[comprises]]is at least one of cervical cancer, breast cancer, melanoma, lung cancer and bone marrow cancer”.
Claim Rejections - 35 USC § 101 - Nonstatutory (Not One of the Four Statutory Categories)
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 15-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to nonstatutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claim is directed to the use of the nitrogen-containing polycyclic aromatic compound according to claim 1 in the preparation of an anti-tumor drug.
It is unclear if claims 15-16 are drawn to a method of using the nitrogen-containing polycyclic aromatic compound according to claim 1, as an anti-tumor drug, i.e., a method of treatment, OR, directed to a process of preparation of the nitrogen-containing polycyclic aromatic compound according to claim 1, for use as an anti-tumor drug, a product claim/a composition of matter claim.
Therefore, the claims do not clearly identify the statutory class to which it belongs and are deemed patent ineligible subject matter.
Claim Interpretation
Claim 1 recites “R1 and R9 are each independently selected from a group consisting of: H, C1-6 alkyl, C1-6 alkoxy, benzyloxy, and halogen;” and claim 2 recites “… wherein the C1-6 alkyl is selected from C1-3 alkyl and the C1-6 alkoxy is selected from C1-3 alkoxy”. However, claim 2, does not require C1-6 alkoxy to actually be present in the compound, they simply define what it must be if present in the compound. As such, a compound lacking the corresponding optional substituents still falls within the scope of the dependent claims.
Further, claims 15-16 are interpreted as intended use claims (see claim interpretation in the 35 U.S.C. 112(b) section above) drawn to a product.
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 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.
Claims 1-12 and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bai et al. (Chirality pairing recognition, a unique reaction forming spiral alkaloids from amino acids stereoselectively in one-pot, 2012, hereinafter Bai) (only a copy of the supplementary material is provided by Applicants in the IDS, the original journal article is attached to the Office action).
Regarding instant claims 1-7, Bai teaches novel spiral alkaloid with unique sketch formed in the one-pot reactions (Pg. 53, first column, first paragraph). Bai teaches the following compounds.
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130
313
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The above compounds fall within the scope of Formula I of instant claim 1, wherein for compound 4a, 4b, 25 and ent-25,
R1 and R9 are each H;
R6 and R14 are each H;
R7 and R8 are each H;
R2, R3, R4, R11, R12, R13 are each H; and
Compound 4a/4b – R5 and R10 are each -COOMe;
Compound 25/ent-25 – R5 and R10 are each -Me;
Compound 15 – R1 and R9 are -Me; R6 and R14 are each H; R7 and R8 are each H; R2, R3, R4, R5, R10, R11, R12, R13 are each H.
Thus, the compounds of Bai anticipate the limitations of instant claim 1 and further satisfy the limitations of instant claims 2-7.
Regarding instant claims 8 and 10-12, Bai teaches a method of preparation of the spiral alkaloid compounds depicted in Fig. 1 (Pg. 54, Fig. 1; Pg. 56, Table 1; Pg. 56, first column, first full paragraph).
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Bai teaches treating the indole starting material (i.e., compounds of Formula 1 and Formula 2 as required by instant claim 8) with an aldehyde (CHOCHO) (i.e., compound of Formula 3 as required by instant claim 8), in the presence of TFA (i.e., an acid catalyst as required by instant claim 8 and anticipates the trifluoroacetic acid of claim 12) and CH2Cl2 as the solvent (i.e., a chlorinated solvent, as one option required by instant claim 11) (Pg. 54, Fig. 1; Pg. 56, Table 1; Pg. 56, first column, first full paragraph). Bai teaches the reaction was carried out at room temperature (Pg. 54, Fig. 1) (which satisfies the reaction temperature of 20°C to 60°C as required by instant claim 10).
Regarding instant claim 9, Bai teaches a method of preparation of the spiral alkaloid compounds (Pg. 54, Fig. 1; Pg. 56, Table 1; Pg. 56, first column, first full paragraph). Bai teaches the unexpected molecular chirality pairing recognition was observed when a (D)-amino acid derivative was mixed with an equal molar of the corresponding (L)-amino acid derivative. For example, D-(+)-1 reacted with L-(–)-1, only one major product formed. This product can be separated as two compounds using chiral column. Their 1H and 13C NMR were the same, and the determined optical rotation for 22 was +187.3, while the ent-22 had –189.2 in chloroform (Pg. 54, first column, first full paragraph). Bai teaches reacting 1.0 mmol of the tryptophan methyl ester with 0.6 mmol CHOCHO (the tryptophan methyl ester inherently contains 50:50 ratio of the enantiomers, i.e., 1.0 mmol of the tryptophan methyl ester would contain 0.5 mmol of the D-isomer and 0.5 mmol of the L-isomer). Therefore, the recited molar ratio of the compound of Formula 1 : the compound of Formula 2 : the compound of Formula 3 of 1:1:(1 to 1.4) is anticipated (the ratio of these compounds in Bai is calculated to be 1:1:1.2).
According to MPEP 2112.01(I), “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).” In the instant case, Bai discloses an identical process of preparation to that of the instant claims and as elaborated above, anticipates the molar ratio of the compound of Formula 1 : the compound of Formula 2 : the compound of Formula 3, as in instant claim 9.
Regarding instant claims 15-16, Bai teaches several compounds that fall within the scope of Formula I of instant claim 1.
According to MPEP 2111.02(II), "[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.…Without such reliance, however, a preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention." Consequently, "preamble language merely extolling benefits or features of the claimed invention does not limit the claim scope without clear reliance on those benefits or features as patentably significant."
In the instant case, Bai anticipates the nitrogen-containing polycyclic aromatic compound of claim 1. The nitrogen-containing polycyclic aromatic compound of Bai is capable of functioning as an anti-tumor drug. Therefore, the intended use limitations of instant claims 15-16, are anticipated by the disclosure of Bai.
Allowable Subject Matter
Claims 13-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Claims 1-12 and 15-18 are rejected.
Claims 13-14 are objected to.
No claims are allowed.
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/PADMAJA S RAO/Examiner, Art Unit 1627