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
This Non-Final Rejection supersedes the Non-Final Rejection dated 06/03/2026.
Claims 66-67, 69-70, 74, 80-81, 83-85, 93, 112-113, 117, 121, 126-128 and 135-136 are pending as of the response filed 02/19/2026. Claims 1-65, 68, 71-73, 75-79, 82, 86-92, 94-111, 114-116, 118-120, 122-125, 129-134 and 137 are cancelled. Applicants election of a single species of a cannabinoid anion as cannabigerol anion and a single species of health condition being treated with the administration of the cannabinoid anion as arthritis without traverse, is acknowledged. Claims 66-67, 69-70, 74, 83-85 and 135-136 encompass the elected species. Claims 80-81, 93, 112-113, 117, 121 and 126-128 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.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 66-67, 69-70, 74, 83-85 and 135-136 have been examined to the extent to which they are readable on the above identified elected species.
In view of the pending claims, the following rejections are made as discussed below.
Priority
This application is a 371 of PCT/US2022/015914 filed 02/10/2022, PCT/US2022/015914 has PRO 63/282,123 filed 11/22/2021, PCT/US2022/015914 claims priority to PRO 63/256,452 filed 10/15/2021, PRO 63/254,429 filed 10/11/2021, PRO 63/228,572 filed 08/02/2021, PRO 63/228,563 filed 08/02/2021, PRO 63/228,594 filed 08/02/2021, PRO 63/194,810 filed 05/28/2021, PRO 63/191,814 filed 05/21/2021, PRO 63/191,844 filed 05/21/2021, 63/191,830 filed 05/21/2021, PRO 63/191,872 filed 05/21/2021, PRO 63/154,538 filed 02/26/2021, PRO 63/154,480 filed 02/26/2021,
PRO 63/154,579 filed 02/26/2021, PRO 63/154,507 filed 02/26/2021, PRO 63/148,047 filed 02/10/2021.
The subject matter of claims 66-67, 69-70, 74, 83-85 and 135-136 are supported by the earliest ‘047 provisional application and accordingly, have an effective filing date of 02/10/2021.
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 66-67, 69-70, 74, 83-85 and 135-136 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.
Claim 66 and claim 67 are drawn to a method to administer a cannabinoid, comprising: providing a composition comprising a cannabinoid anion, wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule, and the cannabinoid molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion; administering the composition to a subject;
and converting the cannabinoid anion into the cannabinoid molecule ex vivo prior to the administering (claim 66) OR
and converting the cannabinoid anion into the cannabinoid molecule in situ subsequent to the administering (claim 67).
The claims are drawn broadly to any cannabinoid anion that is a conjugate base of a cannabinoid molecule, wherein the cannabinoid molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion. The instant specification defines a cannabinoid anion to refer to a cannabinoid chemical species that comprises a net negative charge (Pg. 3, Lns. 1-2 of the instant specification). The instant specification discloses anions with the following general structures I, II and III, with variables as defined (Pg. 5, Ln. 32 – Pg. 9, Ln. 9).
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The instant specification does not teach a PHOSITA how to synthesize, isolate, and formulate the wide variety of anions disclosed. Applicants exemplify two specific anions – cannabidiol anion in examples 4-15 (Pg. 18, Ln. 14 - Pg. 20, Ln. 9 of instant specification), and cannabigerol anion in examples 16-20 (Pg. 20 Ln. 11 - Pg. 20, Ln. 36 of instant specification). The instant specification does not discuss any specific analytical techniques used to measure the pKa values of the cannabinoid molecules, especially considering their high lipophilicity. Thus, these are not viewed as being reasonably representative of the genus of compounds 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 of cannabinoid anions. It is not readily apparent as to how a PHOSITA would identify the cannabinoid anions that fall within the recited functional mathematical range of acid dissociation constant values - at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion.
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 compositions comprising a cannabinoid anion recited in the method claims at the time of filing, because the specification does not conclusively demonstrate the structure-activity relationship of the claimed vast array of cannabinoid compounds, towards the specified range of acid dissociation constants being claimed. The instant specification does not describe synthesis/isolation of enough species of cannabinoid anions having the recited range of acid dissociation constants within the scope of the claimed invention. Thus, the written description requirement for the claimed genus of cannabinoid anion species 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 (i.e., common intrinsic property that lies within the range) 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 (i.e., common intrinsic property that lies within the range) that flows from the substantial structural feature.
Claims 69-70, 74, 83-85 and 135-136 depend either directly or indirectly from a rejected base claim and are similarly rejected.
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.
Claim 74 is 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 74, the claim depends from claim 70 and recites “wherein: the molecule is effective to treat or prophylactically prevent the health condition; the amount lacks the cannabinoid molecule at a concentration that is effective to treat or prophylactically prevent the health condition; and the amount comprises the cannabinoid anion at a concentration that is effective to treat or prophylactically prevent the health condition”. Claim 74 indirectly depends from claim 67, wherein the cannabinoid anion is converted to the cannabinoid molecule in situ, implying that the cannabinoid molecule is the active form that treats or prevents the health condition. However, claim 74 recites that the “amount” lacks the “cannabinoid molecule” in a therapeutically effective amount, casting doubt on the active form that “treats or prophylactically prevents the health condition”. Moreover, the amount effective to treat or prophylactically prevent the health condition appears to be dependent on the health condition being treated (claim 70). Therefore, the metes and bounds of the claim are indefinite.
For the purpose of applying prior art, claim 74 has been interpreted as wherein the composition administered predominantly comprises the cannabinoid anion having sub-therapeutic amounts of the cannabinoid molecule when the composition is provided.
Claim Interpretation
The term “cannabinoid molecule” recited in the claims are interpreted as referring to the neutral uncharged cannabinoid molecule.
Claim Rejections - 35 USC § 103
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.
Claims 66-67, 69-70, 74 and 83-85 are rejected under 35 U.S.C. 103 as being unpatentable over Stinchcomb et al. (US 2010/0273895 A1, 28 October 2010, hereinafter Stinchcomb) in view of Ziegler et al. (Mitsonobu reaction of cannabidiol. Synthesis of water-soluble cannabidiol derivatives, 19 November 2020, hereinafter Ziegler).
Regarding instant claims 66-67, Stinchcomb teaches a method of administering a composition to a mammal containing cannabidiol comprising the steps of preparing a composition comprising cannabidiol (i.e., providing a composition) and administering the composition to the skin of a mammal (Para. [0048]). Stinchcomb teaches the term “cannabidiol” refers to cannabidiol prodrugs, pharmaceutically acceptable derivatives of cannabidiol, including pharmaceutically acceptable salts of cannabidiol (Para. [0044]). Stinchcomb teaches “pharmaceutically acceptable salts” or “salts” to include any salt of the parent molecule, such as cannabidiol or a cannabinoid prodrug known to a person of ordinary skill in the art. Stinchcomb teaches an embodiment drawn to basic salts of alkali metal salts, e.g., sodium salt (Paras. [0055]-[0056]) (a sodium salt of cannabidiol satisfies the instant limitation drawn to providing a composition comprising a cannabinoid anion, wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule). Stinchcomb teaches the cannabidiol may be in any suitable form for administration to a mammal, such as a salt, provided that the salt is therapeutically active or undergoes conversion within (i.e., in situ) or outside of the body (i.e., ex vivo) to a therapeutically active form of cannabidiol.
Stinchcomb do not explicitly teach the cannabinoid molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion.
Ziegler evidences that the pKa of cannabidiol (CBD) is approximately 8.0-8.3 (Pg. 200, first paragraph). This equates to an acid dissociation constant for CBD in water, i.e., Ka of 5.01 x 10-9 M to 1.0 x 10-8 M (calculated using the formula pKa = -log10(Ka)). This falls entirely within the recited acid dissociation constant of 50 femtomolar to 50 nanomolar (5 x 10-14 M to 5 x 10-8 M) for the cannabinoid molecule. Thus, the disclosure of Stinchcomb meets the instant limitation drawn to wherein the cannabinoid molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion (pKa of CBD is an intrinsic property).
Ziegler teaches a significant hurdle for the medical application of CBD and other cannabinoids is the high lipophilicity of these compounds and thus, their poor water solubility (Pg. 199, first paragraph). Ziegler teaches deprotonating the phenolic alcohol groups in the resorcinol moiety of CBD as a way to overcome the poor water solubility of CBD (Pg. 199, first paragraph).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, in view of the teachings of Stinchcomb and Ziegler to have administered a composition containing cannabidiol in the form of the sodium salt, to arrive at the method of the instant claims with a reasonable expectation of success. Stinchcomb teaches a method of administering a composition to a mammal containing cannabidiol comprising the steps of providing a composition and administering the composition to the skin of a mammal. Stinchcomb teaches the term “cannabidiol” includes pharmaceutically acceptable salts with alkali metal salts, e.g., sodium salt in an embodiment. Stinchcomb teaches the cannabidiol may be in any suitable form for administration to a mammal, such as a salt, provided that the salt is therapeutically active or undergoes conversion within (i.e., in situ) or outside of the body (i.e., ex vivo) to a therapeutically active form of cannabidiol. Ziegler evidences that the pKa of cannabidiol (CBD) is approximately 8.0-8.3 (this being an intrinsic property of CBD), which equates to an acid dissociation constant for CBD in water of 5.01 x 10-9 M to 1.0 x 10-8 M, thus showing that the disclosure of Stinchcomb meets the instant limitation drawn to wherein the cannabinoid molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion. Ziegler provides motivation to deprotonate the phenolic alcohol groups in the resorcinol moiety of CBD as a way to overcome the poor water solubility of CBD. Therefore, one of ordinary skill in the art would have been motivated to administer a composition containing cannabidiol, specifically in the form of the sodium salt, to provide the cannabinoid as an anion (a phenolate), as instantly claimed.
Therefore, the teachings of Stinchcomb in view of Ziegler render the method of instant claims 66-67, prima facie obvious.
Regarding instant claim 69, the combined teachings of Stinchcomb and Ziegler render the method of claim 67 prima facie obvious. Stinchcomb teaches a therapeutically effective amount of cannabidiol is administered to treat a medical condition (Para. [0097]). Stinchcomb teaches the term “treat” includes preventing the medical condition from occurring in a subject, which may (i.e., is at risk of developing the health condition) or may not be predisposed to the condition, inhibiting the medical condition, e.g., arresting, slowing or delaying the onset, development or progression of the medical condition; or relieving the medical condition (Paras. [0093]-[0096]). Therefore, the limitations of instant claim 69 are rendered prima facie obvious.
Regarding instant claim 70, the combined teachings of Stinchcomb and Ziegler render the method of claim 69 prima facie obvious. Stinchcomb teaches the term “therapeutically effective amount” refers to an amount of compound or agent that is sufficient to elicit the required or desired therapeutic and/or prophylactic response, as the particular treatment context may require (Para. [0091]). Therefore, the limitations of instant claim 70 are rendered prima facie obvious.
Regarding instant claim 74 (given the best interpretation), the combined teachings of Stinchcomb and Ziegler render the method of claim 70 prima facie obvious. Stinchcomb teaches a method of administering a composition to a mammal containing cannabidiol, wherein the cannabinoid is present as an alkali metal salt, e.g., sodium salt in an embodiment (Paras. [0055]-[0056]). This step of Stinchcomb meets the limitation drawn to wherein “the amount lacks the cannabinoid molecule at a concentration that is effective to treat or prophylactically prevent the health condition; and the amount comprises the cannabinoid anion at a concentration that is effective to treat or prophylactically prevent the health condition”, since at the point of administration the cannabidiol is administered as an anion (present predominantly as the anion) and the neutral cannabidiol molecule does not exist. Subsequent to the administration, the cannabinoid molecule (neutral cannabidiol) is generated in situ, thereby later achieving therapeutic levels. Thus, the composition originally lacks therapeutic levels of the neutral cannabidiol. As taught by Ziegler, this dosing strategy is adopted to bypass the significant hurdle for of high lipophilicity of the cannabinoids and to overcome poor water solubility (Pg. 199, first paragraph). Therefore, the limitations of instant claim 74 is rendered prima facie obvious.
Regarding instant claims 83-85, the combined teachings of Stinchcomb and Ziegler render the method of claim 69 prima facie obvious. Stinchcomb teaches the medical condition being treated to include arthritis (the instantly elected health condition being treated) (Para. [0051]; Paras. [0097]-[0098]; Para. [0163]).
Claims 135-136 are rejected under 35 U.S.C. 103 as being unpatentable over Stinchcomb et al. (US 2010/0273895 A1, 28 October 2010, hereinafter Stinchcomb) in view of Ziegler et al. (Mitsonobu reaction of cannabidiol. Synthesis of water-soluble cannabidiol derivatives, 19 November 2020, hereinafter Ziegler) as applied to claims 66-67, 69-70, 74 and 83-85 above, and further in view of Feldmann et al. (US 6,410,588 B1, 25 June 2002, hereinafter Feldmann).
The teachings of Stinchcomb and Ziegler are set forth in the obviousness rejection above and incorporated herein by reference.
Regarding instant claims 135-136, the combined teachings of Stinchcomb and Ziegler render the method of claim 69 prima facie obvious.
Stinchcomb and Ziegler do not teach wherein aberrant tumor necrosis factor alpha ("TNF-alpha") signaling either causes the health condition; and the pharmaceutical composition is administered to inhibit TNF-alpha-mediated signaling pathways and wherein: aberrant tumor necrosis factor alpha ("TNF-alpha") signaling exacerbates the health condition; and the pharmaceutical composition is administered to inhibit TNF-alpha-mediated signaling pathways.
Feldmann teaches that cannabinoids may be used to treat inflammatory diseases, such as rheumatoid arthritis (Col. 2, Lns. 22-24). Feldmann teaches inflammatory diseases involve the complex interaction between several components such as Interleukins (IL-1, IL-6 and IL-8), TNF-α and various mediators such as nitric oxide, ROI and PGE (Col. 2, Lns. 24-27). Feldmann teaches CBD at 10 mg/kg decreases serum TNFα production in LPS challenged mice (Col. 9, Lns. 66-67; FIG. 8). Feldmann teaches that CBD inhibits TNFα production in a dose-dependent manner (Col. 5, Lns. 45-67; TABLE 1) (this meets the instant limitation that CBD interferes with TNF-α-mediated pathways as evidenced by page 16, lines 17-23 of the instant specification that discloses a reduction in serum TNFα concentration are suggestive of the cannabinoids ability to inhibit TNF-α-mediated signaling pathways). Feldmann teaches that CBD suppresses spontaneous TNF-α release by synovium taken from arthritic animals (Col. 12, Lns. 19-50; TABLE 6) (this indicates aberrant TNF-α signaling in arthritis).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, in view of the teachings of Stinchcomb, Ziegler and Feldmann, to have utilized the method of Stinchcomb to inhibit TNF-alpha-mediated signaling pathways in health conditions associated with aberrant TNF-alpha signaling or conditions exacerbated by aberrant TNF-alpha signaling, to arrive at the method of the instant claims with a reasonable expectation of success. The motivation being to exert an anti-inflammatory effect (Col. 2, Lns. 28-31).
With respect to the instantly elected species of cannabinoid anion, cannabigerol, Stinchcomb teaches the “cannabinoid” includes any compound that interacts with a cannabinoid receptor (Para. [0043]). Stinchcomb and Ziegler do not teach cannabigerol.
Feldmann teaches the cannabinoids to include a cannabinoid having the general formula II (Col. 2, Lns. 32-60).
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Feldmann exemplifies cannabigerol as a preferred cannabinoid (Col. 3, Lns. 10-20).
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Given the teachings of Stinchcomb, Ziegler and Feldmann, a person of ordinary skill in the art would have been motivated to substitute the cannabidiol of Stinchcomb with cannabigerol as taught by Feldmann, to arrive at a sodium salt of cannabigerol as the anion of the instant method. Cannabigerol, which has an identical resorcinol core to that of cannabidiol, will be expected to have a close pKa value to that of cannabidiol. In water, the pKa values for cannabinoids with this dihydroxybenzene structure typically fall in the range of roughly 9.5 to 10.6. Therefore, a composition comprising a cannabigerol anion will be expected to satisfy the recited acid dissociation constant in water, of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the neutral cannabigerol molecule into its phenolate anion.
Therefore, the combined teachings of Stinchcomb, Ziegler and Feldmann render the use of cannabigerol in the method of instant claims 66-67 prima facie obvious.
According to MPEP 2144.06 (II), “An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982)”. In the instant case, the cannabidiol of Stinchcomb and the cannabigerol of Feldmann are both cannabinoids that are art recognized equivalents.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 66-67, 69-70, 74, 83-85 and 135-136 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 80, 84-86, 90, 103 and 113-119 of co-pending Application No 17/797,088 in view of Stinchcomb et al. (US 2010/0273895 A1, 28 October 2010, hereinafter Stinchcomb) and Feldmann et al. (US 6,410,588 B1, 25 June 2002, hereinafter Feldmann).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a method to administer a molecule to a subject, comprising providing a composition comprising an anion; converting the anion into the molecule; and administering the composition to the subject, wherein the molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the molecule into the anion.
The instant claims are drawn to a method to administer a cannabinoid, comprising: providing a composition comprising a cannabinoid anion, wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule, and the cannabinoid molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion; administering the composition to a subject;
and converting the cannabinoid anion into the cannabinoid molecule ex vivo prior to the administering OR converting the cannabinoid anion into the cannabinoid molecule in situ subsequent to the administering.
The claims of the co-pending ‘088 application are drawn to a method to administer a molecule to a subject, comprising providing a composition comprising an anion; converting the anion into the molecule; and administering the composition to the subject, wherein the molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the molecule into the anion.
Claims 80, 84-85, 90, 103 and 118-119 of the reference ‘088 application wherein the anion is a cannabinoid anion, render obvious the methods of instant claims 66-67.
The reference ‘088 application does not teach wherein the composition is administered in an amount effective to treat or prophylactically prevent a health condition; wherein the amount lacks the cannabinoid molecule at a concentration that is effective to treat or prophylactically prevent the health condition; and the amount comprises the cannabinoid anion at a concentration that is effective to treat or prophylactically prevent the health condition; wherein the health condition is as recited in instant claims 83-85; wherein aberrant tumor necrosis factor alpha ("TNF-alpha") signaling either causes OR exacerbates the health condition; and the pharmaceutical composition is administered to inhibit TNF-alpha-mediated signaling pathways.
Stinchcomb teaches a method of administering a composition to a mammal containing cannabidiol comprising the steps of providing a composition and administering the composition to the skin of a mammal, wherein the cannabidiol is present as a sodium salt in certain embodiments (Para. [0048]; [0056]). Stinchcomb teaches a therapeutically effective amount of cannabidiol is administered to treat a medical condition (Para. [0097]). Stinchcomb teaches the term “treat” includes preventing the medical condition from occurring in a subject, which may (i.e., is at risk of developing the health condition) or may not be predisposed to the condition, inhibiting the medical condition, e.g., arresting, slowing or delaying the onset, development or progression of the medical condition; or relieving the medical condition (Paras. [0093]-[0096]). Stinchcomb teaches the medical condition being treated to include various conditions including arthritis (Para. [0051]; Paras. [0097]-[0098]; Para. [0163]).
Claim 86 of the reference ‘088 application teaches the cannabinoid molecule being present in a sub-therapeutic amount compared to the cannabinoid anion as in instant claim 74.
Feldmann teaches inflammatory diseases involve the complex interaction between several components such as Interleukins (IL-1, IL-6 and IL-8), TNF-α and various mediators such as nitric oxide, ROI and PGE (Col. 2, Lns. 24-27). Feldmann teaches CBD at 10 mg/kg decreases serum TNFα production in LPS challenged mice (Col. 9, Lns. 66-67; FIG. 8). Feldmann teaches that CBD inhibits TNFα production in a dose-dependent manner (Col. 5, Lns. 45-67; TABLE 1) (this indicates that CBD interferes with TNF-α-mediated pathways as evidenced by page 16, lines 17-23 of the instant specification that discloses a reduction in serum TNFα concentration are suggestive of the cannabinoids ability to inhibit TNF-α-mediated signaling pathways). Feldmann teaches that CBD suppresses spontaneous TNF-α release by synovium taken from arthritic animals (Col. 12, Lns. 19-50; TABLE 6) (this indicates aberrant TNF-α signaling in arthritis).
Therefore, the combined teachings of the reference ‘088 application in view of Stinchcomb and Feldmann render the instant method claims prima facie obvious, using a similar rationale to that used in the 35 U.S.C. 103 rejection discussed above.
Thus, claims 80, 84-86, 90, 103 and 113-119 of co-pending application 17/797,088 and the instant claims 66-67, 69-70, 74, 83-85 and 135-136 are not patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 66-67, 69-70, 74, 83-85 and 135-136 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 9-10 and 16 of U.S. Patent No. 10,555,914 B1 as evidenced by Ziegler et al. (Mitsonobu reaction of cannabidiol. Synthesis of water-soluble cannabidiol derivatives, 19 November 2020, hereinafter Ziegler) in view of Stinchcomb et al. (US 2010/0273895 A1, 28 October 2010, hereinafter Stinchcomb) and Feldmann et al. (US 6,410,588 B1, 25 June 2002, hereinafter Feldmann).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a composition comprising a cannabinoid anion, wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule.
The instant claims are drawn to a method to administer a cannabinoid, comprising: providing a composition comprising a cannabinoid anion, wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule, and the cannabinoid molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion; administering the composition to a subject;
and converting the cannabinoid anion into the cannabinoid molecule ex vivo prior to the administering OR converting the cannabinoid anion into the cannabinoid molecule in situ subsequent to the administering.
The claims of the reference ‘914 patent are drawn to
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The claims 1-5, 9-10 and 16 of the reference ‘914 patent anticipate a composition comprising a cannabinoid anion, wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule. The reference ‘914 patent teaches the cannabinoid anion as the phenolate anion of CBD, THC, etc. (first and last compound of claim 1 of the reference patent).
Ziegler evidences that the pKa of cannabidiol (CBD) (an inherent chemical property) is approximately 8.0-8.3 (Pg. 200, first paragraph). This equates to an acid dissociation constant for CBD in water, i.e., Ka of 5.01 x 10-9 M to 1.0 x 10-8 M (calculated using the formula pKa = -log10(Ka)). This falls entirely within the recited acid dissociation constant of 50 femtomolar to 50 nanomolar (5 x 10-14 M to 5 x 10-8 M) for the cannabinoid molecule.
The reference ‘914 patent does not teach a method to administer the composition as in instant claims 66-67; OR the limitations of dependent claims 69-70, 74, 83-85 and 135-136.
Stinchcomb teaches a method of administering a composition to a mammal containing cannabidiol comprising the steps of providing a composition and administering the composition to the skin of a mammal, wherein the cannabidiol is present as a sodium salt in certain embodiments (Para. [0048]; [0056]) (i.e., as an anion of CBD). Stinchcomb teaches a therapeutically effective amount of cannabidiol is administered to treat a medical condition (Para. [0097]). Stinchcomb teaches the term “treat” includes preventing the medical condition from occurring in a subject, which may (i.e., is at risk of developing the health condition) or may not be predisposed to the condition, inhibiting the medical condition, e.g., arresting, slowing or delaying the onset, development or progression of the medical condition; or relieving the medical condition (Paras. [0093]-[0096]). Stinchcomb teaches the medical condition being treated to include various conditions including arthritis (Para. [0051]; Paras. [0097]-[0098]; Para. [0163]). The method of administering step of Stinchcomb meets the limitation drawn to wherein “the amount lacks the cannabinoid molecule at a concentration that is effective to treat or prophylactically prevent the health condition; and the amount comprises the cannabinoid anion at a concentration that is effective to treat or prophylactically prevent the health condition” (as in instant claim 74), since at the point of administration the cannabidiol is administered as an anion (present predominantly as the anion) and the neutral cannabidiol molecule does not exist. Subsequent to the administration, the cannabinoid molecule (neutral cannabidiol) is generated in situ, thereby later achieving therapeutic levels. Thus, the composition originally lacks therapeutic levels of the neutral cannabidiol.
Feldmann teaches inflammatory diseases involve the complex interaction between several components such as Interleukins (IL-1, IL-6 and IL-8), TNF-α and various mediators such as nitric oxide, ROI and PGE (Col. 2, Lns. 24-27). Feldmann teaches CBD at 10 mg/kg decreases serum TNFα production in LPS challenged mice (Col. 9, Lns. 66-67; FIG. 8). Feldmann teaches that CBD inhibits TNFα production in a dose-dependent manner (Col. 5, Lns. 45-67; TABLE 1) (this indicates that CBD interferes with TNF-α-mediated pathways as evidenced by page 16, lines 17-23 of the instant specification that discloses a reduction in serum TNFα concentration are suggestive of the cannabinoids ability to inhibit TNF-α-mediated signaling pathways). Feldmann teaches that CBD suppresses spontaneous TNF-α release by synovium taken from arthritic animals (Col. 12, Lns. 19-50; TABLE 6) (this indicates aberrant TNF-α signaling in arthritis).
Therefore, the combined teachings of the reference ‘914 patent as evidenced by Ziegler, in view of Stinchcomb and Feldmann render the instant method claims prima facie obvious, using a similar rationale to that used in the 35 U.S.C. 103 rejection discussed above.
Thus, claims 1-5, 9-10 and 16 of U.S. Patent No. 10,555,914 B1 and the instant claims 66-67, 69-70, 74, 83-85 and 135-136 are not patentably distinct.
This is a nonstatutory double patenting rejection.
Claims 66-67, 69-70, 74, 83-85 and 135-136 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 16-18 of U.S. Patent No. 10,609,944 B1 as evidenced by Ziegler et al. (Mitsonobu reaction of cannabidiol. Synthesis of water-soluble cannabidiol derivatives, 19 November 2020, hereinafter Ziegler) in view of Stinchcomb et al. (US 2010/0273895 A1, 28 October 2010, hereinafter Stinchcomb) and Feldmann et al. (US 6,410,588 B1, 25 June 2002, hereinafter Feldmann).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a composition comprising a cannabinoid anion, wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule.
The instant claims are drawn to a method to administer a cannabinoid, comprising: providing a composition comprising a cannabinoid anion, wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule, and the cannabinoid molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion; administering the composition to a subject;
and converting the cannabinoid anion into the cannabinoid molecule ex vivo prior to the administering OR converting the cannabinoid anion into the cannabinoid molecule in situ subsequent to the administering.
The claims of the reference ‘944 patent are drawn to
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The claims 1-8 and 16-18 of the reference ‘944 patent anticipate a composition comprising a cannabinoid anion, wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule. The reference ‘944 patent teaches the cannabinoid anion as the phenolate anion of CBD.
Ziegler evidences that the pKa of cannabidiol (CBD) (an inherent chemical property) is approximately 8.0-8.3 (Pg. 200, first paragraph). This equates to an acid dissociation constant for CBD in water, i.e., Ka of 5.01 x 10-9 M to 1.0 x 10-8 M (calculated using the formula pKa = -log10(Ka)). This falls entirely within the recited acid dissociation constant of 50 femtomolar to 50 nanomolar (5 x 10-14 M to 5 x 10-8 M) for the cannabinoid molecule.
The reference ‘944 patent does not teach a method to administer the composition as in instant claims 66-67; OR the limitations of dependent claims 69-70, 74, 83-85 and 135-136.
Stinchcomb teaches a method of administering a composition to a mammal containing cannabidiol comprising the steps of providing a composition and administering the composition to the skin of a mammal, wherein the cannabidiol is present as a sodium salt in certain embodiments (Para. [0048]; [0056]) (i.e., as an anion of CBD). Stinchcomb teaches a therapeutically effective amount of cannabidiol is administered to treat a medical condition (Para. [0097]). Stinchcomb teaches the term “treat” includes preventing the medical condition from occurring in a subject, which may (i.e., is at risk of developing the health condition) or may not be predisposed to the condition, inhibiting the medical condition, e.g., arresting, slowing or delaying the onset, development or progression of the medical condition; or relieving the medical condition (Paras. [0093]-[0096]). Stinchcomb teaches the medical condition being treated to include various conditions including arthritis (Para. [0051]; Paras. [0097]-[0098]; Para. [0163]). The method of administering step of Stinchcomb meets the limitation drawn to wherein “the amount lacks the cannabinoid molecule at a concentration that is effective to treat or prophylactically prevent the health condition; and the amount comprises the cannabinoid anion at a concentration that is effective to treat or prophylactically prevent the health condition” (as in instant claim 74), since at the point of administration the cannabidiol is administered as an anion (present predominantly as the anion) and the neutral cannabidiol molecule does not exist. Subsequent to the administration, the cannabinoid molecule (neutral cannabidiol) is generated in situ, thereby later achieving therapeutic levels. Thus, the composition originally lacks therapeutic levels of the neutral cannabidiol.
Feldmann teaches inflammatory diseases involve the complex interaction between several components such as Interleukins (IL-1, IL-6 and IL-8), TNF-α and various mediators such as nitric oxide, ROI and PGE (Col. 2, Lns. 24-27). Feldmann teaches CBD at 10 mg/kg decreases serum TNFα production in LPS challenged mice (Col. 9, Lns. 66-67; FIG. 8). Feldmann teaches that CBD inhibits TNFα production in a dose-dependent manner (Col. 5, Lns. 45-67; TABLE 1) (this indicates that CBD interferes with TNF-α-mediated pathways as evidenced by page 16, lines 17-23 of the instant specification that discloses a reduction in serum TNFα concentration are suggestive of the cannabinoids ability to inhibit TNF-α-mediated signaling pathways). Feldmann teaches that CBD suppresses spontaneous TNF-α release by synovium taken from arthritic animals (Col. 12, Lns. 19-50; TABLE 6) (this indicates aberrant TNF-α signaling in arthritis).
Therefore, the combined teachings of the reference ‘944 patent as evidenced by Ziegler, in view of Stinchcomb and Feldmann render the instant method claims prima facie obvious, using a similar rationale to that used in the 35 U.S.C. 103 rejection discussed above.
Thus, claims 1-8 and 16-18 of U.S. Patent No. 10,609,944 B1 and the instant claims 66-67, 69-70, 74, 83-85 and 135-136 are not patentably distinct.
This is a nonstatutory double patenting rejection.
Claims 66-67, 69-70, 74 and 83-85 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 16-17 of U.S. Patent No. 12,484,606 B2 as evidenced by Sharma et al. (Chemistry, Metabolism, and Toxicology of Cannabis: Clinical Implications, 2012, hereinafter Sharma) in view of Stinchcomb et al. (US 2010/0273895 A1, 28 October 2010, hereinafter Stinchcomb).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a composition comprising a cannabinoid anion, wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule.
The instant claims are drawn to a method to administer a cannabinoid, comprising: providing a composition comprising a cannabinoid anion, wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule, and the cannabinoid molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion; administering the composition to a subject;
and converting the cannabinoid anion into the cannabinoid molecule ex vivo prior to the administering OR converting the cannabinoid anion into the cannabinoid molecule in situ subsequent to the administering.
The claims of the reference ‘606 patent are drawn to a composition comprising an anionic cannabinoid molecule and a cannabinoid molecule at a molar ratio of 1:10 to 10,000:1, wherein the anionic cannabinoid is (6aR,10aR)-3-alkyl-6,6,9-trimethyl-6a,7,8,10a-tetrahydro-6H-benzo[c]chromen-1-oxide; the anionic cannabinoid molecule has a conjugate acid; and the conjugate acid is the cannabinoid molecule; the cannabinoid molecule is (6aR,10aR)-3-alkyl-6,6,9-trimethyl-6a,7,8,10a-tetrahydro-6H-benzo[c]chromen-1-ol (i.e., THC).
The claims 1-7 and 16-17 of the reference ‘606 patent anticipate a composition comprising a cannabinoid anion, wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule. The reference ‘606 patent teaches the cannabinoid anion as the phenolate anion of THC.
Sharma evidences that THC has a pKa of 10.6 (an inherent chemical property). This equates to an acid dissociation constant for THC in water, i.e., Ka of 2.51 x 10-11 M (calculated using the formula pKa = -log10(Ka)). This falls entirely within the acid dissociation constant of 50 femtomolar to 50 nanomolar (5 x 10-14 M to 5 x 10-8 M) for the cannabinoid molecule as required by the instant claims. Thus, the composition of the reference ‘606 patent meets the instant limitation drawn to wherein the cannabinoid molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion.
The reference ‘606 patent does not teach a method to administer the composition as in instant claims 66-67; OR the limitations of dependent claims 69-70, 74, 83-85.
Stinchcomb teaches a method of administering a composition to a mammal containing cannabidiol comprising the steps of providing a composition and administering the composition to the skin of a mammal, wherein the cannabidiol is present as a sodium salt in certain embodiments (Para. [0048]; [0056]) (i.e., as an anion of CBD). Stinchcomb teaches a therapeutically effective amount of cannabidiol is administered to treat a medical condition (Para. [0097]). Stinchcomb teaches the term “treat” includes preventing the medical condition from occurring in a subject, which may (i.e., is at risk of developing the health condition) or may not be predisposed to the condition, inhibiting the medical condition, e.g., arresting, slowing or delaying the onset, development or progression of the medical condition; or relieving the medical condition (Paras. [0093]-[0096]). Stinchcomb teaches the medical condition being treated to include various conditions including arthritis (Para. [0051]; Paras. [0097]-[0098]; Para. [0163]). The method of administering step of Stinchcomb meets the limitation drawn to wherein “the amount lacks the cannabinoid molecule at a concentration that is effective to treat or prophylactically prevent the health condition; and the amount comprises the cannabinoid anion at a concentration that is effective to treat or prophylactically prevent the health condition” (as in instant claim 74), since at the point of administration the cannabidiol is administered as an anion (present predominantly as the anion) and the neutral cannabidiol molecule does not exist. Subsequent to the administration, the cannabinoid molecule (neutral cannabidiol) is generated in situ, thereby later achieving therapeutic levels. Thus, the composition originally lacks therapeutic levels of the neutral cannabidiol. Stinchcomb teaches the “cannabinoid” includes any compound that interacts with a cannabinoid receptor (Para. [0043]).
Therefore, the combined teachings of the reference ‘606 patent as evidenced by Sharma, in view of Stinchcomb render the instant method claims prima facie obvious, using a similar rationale to that used in the 35 U.S.C. 103 rejection discussed above.
Thus, claims 1-7 and 16-17 of U.S. Patent No. 12,484,606 B2 and the instant claims 66-67, 69-70, 74 and 83-85 are not patentably distinct.
This is a nonstatutory double patenting rejection.
Claims 66-67, 69-70, 74, 83-85 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7-10, 13, 15 and 17 of U.S. Patent No. 12,161,608 B2 in view of Stinchcomb et al. (US 2010/0273895 A1, 28 October 2010, hereinafter Stinchcomb).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a method to administer a cannabinoid anion, comprising administering a composition comprising a cannabinoid anion to a subject.
The instant claims are drawn to a method to administer a cannabinoid, comprising: providing a composition comprising a cannabinoid anion, wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule, and the cannabinoid molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion; administering the composition to a subject;
and converting the cannabinoid anion into the cannabinoid molecule ex vivo prior to the administering OR converting the cannabinoid anion into the cannabinoid molecule in situ subsequent to the administering.
The claims of the reference ‘608 patent are drawn to a method to administer a cannabinoid anion, comprising administering a pharmaceutical composition comprising a cannabinoid anion to a subject who presents with either a health condition or a risk of developing a health condition, wherein the cannabinoid anion is not a carboxylate, and wherein the health condition is as recited in claims 1-4 of the reference patent.
Claims 1-4 of the reference ‘608 patent anticipate a method to administer a cannabinoid, comprising: providing a composition comprising a cannabinoid anion and administering the composition to a subject, wherein the subject presents with a health condition or a risk of developing a health condition as in instant claims 66-67 and 69.
The reference ‘608 patent does not explicitly teach wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule, and the cannabinoid molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion and converting the cannabinoid anion into the cannabinoid molecule ex vivo prior to the administering OR converting the cannabinoid anion into the cannabinoid molecule in situ subsequent to the administering as in instant claims 66-67.
Claim 10 of the reference ‘608 patent teaches wherein the cannabinoid anion is cannabigerol anion (2-(3,7-dimethylocta-2,6-diene-1-yl)-3-hydroxy-5-pentylphenolate). Cannabigerol anion, by virtue of its intrinsic property, would have an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion (evidenced by cannabigerol anion being exemplified in examples 16-20, Pg. 20 Ln. 11 - Pg. 20, Ln. 36 of instant specification).
Stinchcomb teaches a method of administering a composition to a mammal containing cannabidiol comprising the steps of providing a composition and administering the composition to the skin of a mammal, wherein the cannabidiol is present as a sodium salt in certain embodiments (Para. [0048]; [0056]) (i.e., as an anion of CBD). Stinchcomb teaches a therapeutically effective amount of cannabidiol is administered to treat a medical condition (Para. [0097]). Stinchcomb teaches the cannabidiol may be in any suitable form for administration to a mammal, such as a salt, provided that the salt is therapeutically active or undergoes conversion within (i.e., in situ) or outside of the body (i.e., ex vivo) to a therapeutically active form of cannabidiol. Stinchcomb teaches the “cannabinoid” includes any compound that interacts with a cannabinoid receptor (Para. [0043]).
Claims 1-4, 13 and 15 of the reference ‘608 patent overlaps in scope with the health condition being treated in instant claims 83-85. Claims 7 and 17 of the reference ‘608 patent render the limitations of instant claims 135-136 drawn to wherein aberrant tumor necrosis factor alpha ("TNF-alpha") signaling either causes OR exacerbates the health condition; and the pharmaceutical composition is administered to inhibit TNF-alpha-mediated signaling pathways, prima facie obvious.
Therefore, claims 1-4, 7-10, 13, 15 and 17 of the reference ‘608 patent in view of Stinchcomb render instant claims 66-67, 69-70, 74, 83-85, prima facie obvious.
Thus, claims 1-4, 7-10, 13, 15 and 17 of U.S. Patent No. 12,161,608 B2 and the instant claims 66-67, 69-70, 74, 83-85 are not patentably distinct.
This is a nonstatutory double patenting rejection.
Claims 66-67, 69-70, 74, 83-85 and 135-136 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 9, 14-15 and 17 of U.S. Patent No. 10,959,961 B2 in view of Stinchcomb et al. (US 2010/0273895 A1, 28 October 2010, hereinafter Stinchcomb) and Feldmann et al. (US 6,410,588 B1, 25 June 2002, hereinafter Feldmann).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a method to administer a cannabinoid anion, comprising converting the cannabinoid anion into the cannabinoid molecule ex vivo prior to the administering and administering the composition comprising a cannabinoid anion to a subject.
The instant claims are drawn to a method to administer a cannabinoid, comprising: providing a composition comprising a cannabinoid anion, wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule, and the cannabinoid molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion; administering the composition to a subject;
and converting the cannabinoid anion into the cannabinoid molecule ex vivo prior to the administering OR converting the cannabinoid anion into the cannabinoid molecule in situ subsequent to the administering.
The claims of the reference ‘961 patent are drawn to a method of consuming a cannabinoid, comprising: providing a composition comprising an anionic cannabinoid molecule dissolved in water, in which the composition has a color; contacting the composition with a Brønsted acid, in which contacting the composition with the Brønsted acid changes the color to either a different color or no color; and consuming the composition after contacting the composition with the Brønsted acid, in which a human being consumes the composition by drinking it, wherein the anionic cannabinoid molecule is selected from the group consisting of a list as recited in claims 1 and 14 of the reference patent.
Claims 1 and 14 of the reference ‘961 patent anticipates the limitations of the method of instant claim 66, wherein
“a method of consuming a cannabinoid” anticipates a method to administer a cannabinoid;
“providing a composition comprising an anionic cannabinoid molecule dissolved in water” anticipates providing a composition comprising a cannabinoid anion;
“contacting the composition with a Brønsted acid, in which contacting the composition with the Brønsted acid changes the color to either a different color or no color” anticipates converting the cannabinoid anion into the cannabinoid molecule ex vivo prior to the administering.
The reference ‘961 patent does not explicitly teach wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule, and the cannabinoid molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion and converting the cannabinoid anion into the cannabinoid molecule in situ subsequent to the administering as in instant claim 67 or the limitations of the dependent claims 69-70, 74, 83-85 and 135-136.
Claims 2 and 15 of the reference ‘961 patent teaches wherein the cannabinoid anion is cannabidiol anion, 2-[(1R,6R)-6-isopropenyl-3-methylcyclohex-2-en-1-yl]-3-hydroxy-5-pentylphenolate.
Cannabidiol anion, by virtue of its intrinsic property, would have an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion (evidenced by cannabidiol anion being exemplified in examples 4-15, Pg. 18, Ln. 14 – Pg. 20, Ln. 9 of instant specification) (This is also evidenced by Ziegler teaching a pKa of 8.0-8.3 for CBD, see discussion under the 103 rejection).
Stinchcomb teaches a method of administering a composition to a mammal containing cannabidiol comprising the steps of providing a composition and administering the composition to the skin of a mammal, wherein the cannabidiol is present as a sodium salt in certain embodiments (Para. [0048]; [0056]) (i.e., as an anion of CBD). Stinchcomb teaches a therapeutically effective amount of cannabidiol is administered to treat a medical condition (Para. [0097]). Stinchcomb teaches the term “treat” includes preventing the medical condition from occurring in a subject, which may (i.e., is at risk of developing the health condition) or may not be predisposed to the condition, inhibiting the medical condition, e.g., arresting, slowing or delaying the onset, development or progression of the medical condition; or relieving the medical condition (Paras. [0093]-[0096]). Stinchcomb teaches the medical condition being treated to include various conditions including arthritis (Para. [0051]; Paras. [0097]-[0098]; Para. [0163]). Stinchcomb teaches the cannabidiol may be in any suitable form for administration to a mammal, such as a salt, provided that the salt is therapeutically active or undergoes conversion within (i.e., in situ) or outside of the body (i.e., ex vivo) to a therapeutically active form of cannabidiol. The method of administering step of Stinchcomb meets the limitation drawn to wherein “the amount lacks the cannabinoid molecule at a concentration that is effective to treat or prophylactically prevent the health condition; and the amount comprises the cannabinoid anion at a concentration that is effective to treat or prophylactically prevent the health condition” (as in instant claim 74), since at the point of administration the cannabidiol is administered as an anion (present predominantly as the anion) and the neutral cannabidiol molecule does not exist. Subsequent to the administration, the cannabinoid molecule (neutral cannabidiol) is generated in situ, thereby later achieving therapeutic levels. Thus, the composition originally lacks therapeutic levels of the neutral cannabidiol.
Feldmann teaches inflammatory diseases involve the complex interaction between several components such as Interleukins (IL-1, IL-6 and IL-8), TNF-α and various mediators such as nitric oxide, ROI and PGE (Col. 2, Lns. 24-27). Feldmann teaches CBD at 10 mg/kg decreases serum TNFα production in LPS challenged mice (Col. 9, Lns. 66-67; FIG. 8). Feldmann teaches that CBD inhibits TNFα production in a dose-dependent manner (Col. 5, Lns. 45-67; TABLE 1) (this indicates that CBD interferes with TNF-α-mediated pathways as evidenced by page 16, lines 17-23 of the instant specification that discloses a reduction in serum TNFα concentration are suggestive of the cannabinoids ability to inhibit TNF-α-mediated signaling pathways). Feldmann teaches that CBD suppresses spontaneous TNF-α release by synovium taken from arthritic animals (Col. 12, Lns. 19-50; TABLE 6) (this indicates aberrant TNF-α signaling in arthritis).
Therefore, the combined teachings of the reference ‘961 patent in view of Stinchcomb and Feldmann render instant claims 66-67, 69-70, 74, 83-85 and 135-136, prima facie obvious, using a similar rationale to that used in the 35 U.S.C. 103 rejection discussed above.
Thus, claims 1-2, 9, 14-15 and 17 of U.S. Patent No. 10,959,961 B2 and instant claims 66-67, 69-70, 74, 83-85 and 135-136 are not patentably distinct.
This is a nonstatutory double patenting rejection.
Claims 66-67, 69-70, 74, 83-85 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-18 of U.S. Patent No. 12,419,855 B2 in view of Stinchcomb et al. (US 2010/0273895 A1, 28 October 2010, hereinafter Stinchcomb).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a method to administer a cannabinoid anion, providing a composition comprising a cannabinoid anion and administering the composition to a subject.
The instant claims are drawn to a method to administer a cannabinoid, comprising: providing a composition comprising a cannabinoid anion, wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule, and the cannabinoid molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion; administering the composition to a subject;
and converting the cannabinoid anion into the cannabinoid molecule ex vivo prior to the administering OR converting the cannabinoid anion into the cannabinoid molecule in situ subsequent to the administering.
The claims of the reference ‘855 patent are drawn to a method to administer a composition to a subject, comprising topically administering a composition according to claim 17 to the subject, wherein the subject is a human; the composition comprising a liquid phase that comprises a solute and a solvent, wherein the solute is a cannabinoid ion; the cannabinoid ion is 2-(3,7-dimethylocta-2,6-diene-1-yl)-3-hydroxy-5-pentylbenzene-1-oxide (i.e., a cannabigerol anion); the solvent is glycerol; and the cannabinoid ion is dissolved in the glycerol.
Claims 17-18 of the reference ‘855 patent anticipate a method to administer a cannabinoid, comprising: providing a composition comprising a cannabinoid anion, wherein the cannabinoid anion is a conjugate base of a cannabinoid molecule and administering the composition to a subject.
The claims of the reference ‘855 patent do not explicitly teach wherein the cannabinoid molecule has an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion; and converting the cannabinoid anion into the cannabinoid molecule ex vivo prior to the administering OR converting the cannabinoid anion into the cannabinoid molecule in situ subsequent to the administering as in instant claims 66-67 and the limitations of the dependent claims 69-70, 74, 83-85.
Cannabigerol anion, by virtue of its intrinsic property, would have an acid dissociation constant in water of at least 50 femtomolar and no greater than 50 nanomolar for conversion of the cannabinoid molecule into the cannabinoid anion (evidenced by cannabigerol anion being exemplified in examples 16-20, Pg. 20 Ln. 11 - Pg. 20, Ln. 36 of instant specification).
Stinchcomb teaches a method of administering a composition to a mammal containing cannabidiol comprising the steps of providing a composition and administering the composition to the skin of a mammal, wherein the cannabidiol is present as a sodium salt in certain embodiments (Para. [0048]; [0056]) (i.e., as an anion of CBD). Stinchcomb teaches a therapeutically effective amount of cannabidiol is administered to treat a medical condition (Para. [0097]). Stinchcomb teaches the term “treat” includes preventing the medical condition from occurring in a subject, which may (i.e., is at risk of developing the health condition) or may not be predisposed to the condition, inhibiting the medical condition, e.g., arresting, slowing or delaying the onset, development or progression of the medical condition; or relieving the medical condition (Paras. [0093]-[0096]). Stinchcomb teaches the medical condition being treated to include various conditions including arthritis (Para. [0051]; Paras. [0097]-[0098]; Para. [0163]). Stinchcomb teaches the cannabidiol may be in any suitable form for administration to a mammal, such as a salt, provided that the salt is therapeutically active or undergoes conversion within (i.e., in situ) or outside of the body (i.e., ex vivo) to a therapeutically active form of cannabidiol. The method of administering step of Stinchcomb meets the limitation drawn to wherein “the amount lacks the cannabinoid molecule at a concentration that is effective to treat or prophylactically prevent the health condition; and the amount comprises the cannabinoid anion at a concentration that is effective to treat or prophylactically prevent the health condition” (as in instant claim 74), since at the point of administration the cannabidiol is administered as an anion (present predominantly as the anion) and the neutral cannabidiol molecule does not exist. Subsequent to the administration, the cannabinoid molecule (neutral cannabidiol) is generated in situ, thereby later achieving therapeutic levels. Thus, the composition originally lacks therapeutic levels of the neutral cannabidiol.
Therefore, claims 17-18 of the reference ‘855 patent in view of Stinchcomb render instant claims 66-67, 69-70, 74, 83-85, prima facie obvious.
Thus, claims 17-18 of U.S. Patent No. 12,419,855 B2 and instant claims 66-67, 69-70, 74, 83-85 are not patentably distinct.
This is a nonstatutory double patenting rejection.
Miscellaneous
The examiner would like to bring Applicant’s attention to the following:
A power of attorney document is not present in the application file.
Conclusion
Claims 66-67, 69-70, 74, 83-85 and 135-136 are rejected.
No claims are allowed.
Please note that this Non-Final Rejection supersedes the Non-Final Rejection dated 06/03/2026.
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/PADMAJA S RAO/Examiner, Art Unit 1627
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