DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, drawn to a compound and a pharmaceutical composition comprising the compound or a pharmaceutically acceptable salt or deuterated form thereof; and the following the species:
Compound 91 having the structure of:
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as the elected species of compound or a pharmaceutically acceptable salt or deuterated form thereof
in the reply filed on April 17, 2026 is acknowledged.
Claims 4-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 17, 2026.
Status of Claims
Acknowledgement is made of the receipt and entry of the amendment filed on April 17,
2026, wherein claims 1, 3-4 and 7-14 are unchanged; and claims 2, 5-6 are amended.
Claims 1-14 are pending. Claims 4-14 are withdrawn.
Claims 1-3 are under examination in accordance with the elected species.
Priority
The instant application 18/420,562 filed on January 23, 2024 claims priority to, and the benefits of U.S. Provisional Application No. 63/481,385 filed on January 24, 2023, and U.S. Provisional Application No. 63/457,469 filed on April 6, 2023.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 9/6/2024, 11/25/2024, 2/18/2025 and 5/6/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
The third-party submissions under 37 CFR 1.290 submitted on 1/27/2025 are being considered by the Examiner.
Specification
The disclosure is objected to because of the following informalities:
On page 84, paragraph [0268] of the specification describes the synthesis of compound 91, 3-(2-(dimethylamino)ethyl)-1H-indol-4-yl nicotinate, formic acid shown below:
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; However, it is noted that compound 91 is also illustrated in Table 2 (see page 30) shown below:
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, and the nitrogen position in the pyridine ring is not the same as the one recites in paragraph [0268]. Specifically, the compound 91 recites in paragraph [0268] contains 5-pyridinecarboxylate (
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) rather than 3-pyridinecarboxylate (
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). By labeling two structurally distinct compound using the same number (“91”) can cause confusion as to which compound is being referred to as compound 91 in the specification.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-3 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(s) 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.
Instant claims recite “deuterated form thereof”; therefore, the breadth of the claims include any deuterated form of the compound.
In the present case, the specification does not reasonably convey to one of ordinary skill in the art that Applicant was in possession of the full scope of the claimed “deuterated forms” at the time of filing, because the disclosure fails to identify any particular deuterated species, positions of deuterium incorporation, degrees of deuteration, synthetic preparation, or representative examples thereof. The mere boiler plate reference to “deuterated forms” does not provide adequate blaze marks to the vast genus encompassed by the claims.
Regarding the requirement for adequate written description of chemical entities, Applicant's attention is directed to the MPEP §2163. In particular, Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997), cert. denied, 523 U.S. 1089, 118 S. Ct. 1548 (1998), holds that an adequate written description requires a precise definition, such as by structure, formula, chemical name, or physical properties, "not a mere wish or plain for obtaining the claimed chemical invention." Eli Lilly, 119 F.3d at 1566. The Federal Circuit has adopted the standard set forth in the Patent and Trademark Office ("PTO") Guidelines for Examination of Patent Applications under the 35 U.S.C. 112.I "Written Description" Requirement ("Guidelines"), 66 Fed. Reg. 1099 (Jan. 5,2001), which state that the written description requirement can be met by "showing that an invention is complete by disclosure of sufficiently detailed, relevant identifying characteristics," including, inter alia, "functional characteristics when coupled with a known or disclosed correlation between function and structure ..." Enzo Biochem, Inc. v. Gen-Probe Inc., 296 F.3d 316, 1324-25 (Fed. Cir. 2002) (quoting Guidelines, 66 Fed. Reg. at 1106 (emphasis added)). 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, reduction to drawings, or by disclosure of relevant, identifying characteristics 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.
This is a written description rejection.
Claims 1-3 are rejected on the judicially-created basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). The improper Markush grouping includes species of the claimed invention that do not share both a substantial structural feature and a common use that flows from the substantial structural feature.
A Markush claim contains an “improper Markush grouping” if: (1) The species of the Markush group do not share a single structural similarity,” or (2) the species do not share a common use. Members of a Markush group share a "single structural similarity” when they belong to the same recognized physical or chemical class or to the same recognized physical or chemical class or to the same art-recognized class. Members of a Markush group share a common use when they are disclosed in the specification or known in the art to be functionally equivalent (see Federal Register, Vol. 76, No. 27, Wednesday, February 9, 2011, p. 7166, left and middle columns, bridging paragraph).
The members of the improper Markush grouping do not share a substantial feature and/or a
common use that flows from the substantial structure feature for the following reasons:
Claim 1 recites “[a] compound selected from any one of the following structures, or a pharmaceutically acceptable salt or a deuterated form thereof:
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…
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”; and claim 2 recites “[t]he compound of claim 1, having the following structure:
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…
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”. The Markush grouping of the compound encompass a vast variety of alternated compound species that do not share a substantial structure feature, and a common use that flows from the substantial structure feature that is essential for treating 5-HT2A receptor associated disease/disorder. In the present case, these alternated compound species, such as:
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,
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,
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, and
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only share the N,N-dimethyltryptamine (
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) in common, and that does not constitute a significant portion of the compound as a whole. Additionally, according to Oxford (US 5,037,845 A), compound of formula (I)
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and its physiologically acceptable salts and solvates are described as useful in treating and/or preventing pain resulting from dilatation of the cranial vasculature in particular migraine (see e.g., abstract); and according to Brand et al. (US 4,336,378 A), compounds of the formula
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or pharmaceutically acceptable acid addition salts thereof, which are useful as anti-diabetic agents (see e.g., abstract). Even these compounds all shared the N,N-dimethyltryptamine in common, each are taught by the prior art to have a different use. Therefore, it is not apparent that this common structure alone (N,N-dimethyltryptamine) contributes to the substantial structure feature essential for the compounds to treat the entire scope of 5-HT2A receptor associated disease/disorder.
Each of these findings demonstrate that not all members recited in the Markush groupings share a substantial structural feature and a common use that flows from the substantial structural feature. Therefore, the Markush grouping of the compounds recites in the claim drawn to the pharmaceutical composition are also improper for the same reasons set forth herein.
In response to this rejection, Applicant should either amend the claim(s) to recite only individual species or grouping of species that share a substantial structural feature as well as a common use that flows from the substantial structural feature, or present a sufficient showing that the species recited in the alternative of the claims(s) in fact share a substantial structural feature as well as a common use that flows from the substantial structural feature. This is a rejection on the merits and may be appealed to the Board of Patent Appeals and Interferences in accordance with 35 U.S.C. §134 and 37 CFR 41.31(a)(1) (emphasis provided).
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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Hagel et al. (WO 2023/173196 A1; cited in the IDS filed on September 6, 2024).
Hagel et al. teaches a compound C(XXXVI) having the structure of:
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as an exemplary compound having chemical formula (I) (see e.g., p. 10, [0045], C(XXXVI)). Hagel et al. further teaches the compound having formula (I) can interact with a receptor in the subject to thereby modulate the receptor and exerts a pharmacological effect, the receptor can be a, inter alia, 5-HT2A receptor (see e.g., [0049]-[0050]). Hagel et al. further teaches the chemical compound having chemical formula (I):
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, wherein R4 is a carboxylic acid moiety or a derivative thereof that has the chemical formula (II):
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, wherein R4a is an heteroaryl group or a substituted heteroaryl group; and R3a and R3b are each independently, inter alia, an alkyl group (see e.g., claims 1-2). Hagel et al. further teaches the term “hetero”, as used herein (e.g., “heteroaryl”) means a saturated or partially saturated or aromatic cyclic group, in which one or two ring atoms are a heteroatom selected from N, O, or S, the remaining rings atoms being C (see e.g., [00105]). Hagel et al. further teaches a pharmaceutical or recreational drug formulation comprising the chemical compound having chemical formula (I), together with a pharmaceutically acceptable excipient, diluent, or carrier (see e.g., claim 32).
A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). In the present case, the difference between the compound C(XXXVI) of Hagel et al. and the claimed compound (i.e., the elected compound species) is that the prior art compound contains 5-pyridinecarboxylate rather than 3-pyridinecarboxylate, and the pyridine ring is substituted with O-methyl rather than unsubstituted shown below (see shaded):
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.
It would have been prima facie obvious to one of ordinary skill in the art at the time the application was filed to select the compound C(XXXVI) of Hagel et al. and then modify said compound by removing the O-methyl from the pyridine ring, and then change the position of nitrogen atom on the pyridine ring to the claimed position (from 5-pyridinecarboxylate to 3-pyridinecarboxylate). One would have been motivated to do so, because Hagel et al. teaches the heteroaryl (e.g., pyridine) group at R4a can be substituted or be by itself (i.e., unsubstituted), and the term “hetero” in “heteroaryl” means aromatic cyclic group contains one or two heteroatom selected from N, O, or S with the remaining being C. The difference between the position of nitrogen atom on the pyridine ring of compound C(XXXVI) and the claimed compound are common derivatives known as isomers. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Prior art structures do not have to be true homologs or isomers to render structurally similar compounds prima facie obvious. In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979). One would have a reasonable expectation of success to arrive at the claimed invention, because one would have reasonably expected that by removing the substitution added to the pyridine ring, and changing the position of nitrogen atom of the pyridine ring would have successfully prepare compounds similar to compound C(XXXVI) that are pharmacologically active compounds useful for modulating receptors, including 5-HT2A.
Therefore, the claimed invention is prima facie obvious to one of ordinary skill in the art at the time the application was filed.
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.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 29 of copending Application No. 18/813,131 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application is drawn to a method of treating a disease comprising subcutaneously administering a pharmaceutical composition comprising a compound selected form inter alia,
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a pharmaceutically acceptable salt thereof, or a deuterated form thereof (see claim 29).
The fact that the reference application teaches the compound in the method, it meets the structural limitation of the compound and the pharmaceutical composition instantly claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Chihyi Lee whose telephone number is (571)270-0663. The examiner can normally be reached Monday - Friday 8:30 am - 5:00 pm EST.
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/CHIHYI LEE/
/JEAN P CORNET/Primary Examiner, Art Unit 1628
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