DETAILED ACTION
Notice of AIA Status
The instant application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the Leahy-Smith America Invents Act (AIA ).
If the status of the application as subject to AIA or pre-AIA is incorrect, any correction of the statutory basis (e.g., changing from AIA to pre-AIA ) for a rejection under 35 U.S.C. §§ 102 and/or 103 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.
Status of the Claims
The listing of claims filed 20 November 2023 has been examined.
Claims 21–35 are new and pending. Claims 1–20 are canceled.
Benefit of Earlier Filing Date
The instant application was filed 20 November 2023; is a national stage application of PCT/CA2022/050833, filed 25 May 2022, and claims the benefit of an earlier filing date of U.S. Prov. Pat. App. Serial No. 63/309,735, filed 15 February 2022; and 63/193,062, filed 26 May 2021. Applicant’s claim is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted 20 November 2023 and 28 May 2025 are acknowledged and have been considered.
Third-Party Submission
The third-party submission under 37 C.F.R. § 1.290 submitted 10 April 2025 is acknowledged and has been considered.
Claim Objections
Claim 22 is objected to for minor informalities.
Claim 22 recites, “(ii) R2 is C1-C6 alkyl, C1-C6 substituted alkyl, and CN.”
A single R2 variable cannot be both alkyl and CN. Applicant may amend clause (ii) to recite “R2 is selected from the group consisting of . . .” or the options in the alternative (“or”).
Appropriate correction is required.
Claim Rejections - 35 U.S.C. § 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.
(i) Claim 33 is rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
A broad limitation together with a narrow limitation that falls within the broad limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Claim 33 recites several clauses that include a broad limitation followed by a narrow limitation. For example: “addiction including alcoholism, tobacco addiction, cocaine addiction, and opioid addiction”; “pain indications including neuropathic pain, pain from chemotherapy associated neuropathy, phantom limb pain and fibromyalgia”; “inflammation (including chronic and acute)”; “eating disorders including anorexia . . .”; etc. (italics added).
The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Appropriate correction is required.
(ii) Claim 34 is rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 34 recites: “Z (i) is selected from . . . -OOCC(CH3)3, acetyl, -C(O)N(H)-iPr . . .”
It is unclear what the structure of -OOCC(CH3)3 is because Applicant uses “C(O)” to represent a carbonyl [see -C(O)N(H)-iPr recited in same clause]. Accordingly, the -OOC portion of the structure is ambiguous [C(CH3)3 is understood to be t-butyl].
Appropriate correction is required.
Claim Rejections - 35 U.S.C. § 112
The following is a quotation of 35 U.S.C. § 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 22–26 are rejected under 35 U.S.C. § 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 22 recites, “(ii) R2 is C1-C6 alkyl, C1-C6 substituted alkyl, and CN.”
Claim 22 depends from claim 21.
In claim 21, the definition of R2 does not include C1-C6 substituted alkyl.
Accordingly, the scope of claim 22 is broader than the scope of claim 21 with respect to the R2 variable. Because claim 22 does not incorporate all of the limitations of claim 21, it is an improper dependent claim.
Claims 23–26 are rejected because they depend from claim 22 without curing the issue.
Appropriate correction is required.
Claim Rejections - 35 U.S.C. § 112
The following is a quotation 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.
Claim 32 is rejected under 35 U.S.C. § 112(a) because 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 the claims.
While the specification reasonably provides enablement for treating one or more disorders, it does not reasonably provide enablement for treating any and all disorders.
MPEP § 2164.01(a) explains how enablement for the claimed invention can be analyzed:
In order to determine compliance with the enablement requirement of 35 U.S.C. 112(a), the Federal Circuit developed a framework of factors in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), referred to as the Wands factors to assess whether any necessary experimentation required by the specification is “reasonable” or is “undue.” . . . These factors include, but are not limited to:
(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.
The Wands factors are analyzed with respect to the claimed invention in turn below.
The breadth of the claim is broad in scope. Claim 32 recites: “A method of treating a disorder comprising administering to a patient an effective amount of the compound as claimed in claim 30.” The claim does not define or limit “disorder,” and therefore encompasses any disorders for an unidentified population of subjects.
Claims are read in light of the specification. The scope of the specification is much more limited than the claim. The specification states the compounds are “selective agents at serotonin receptors.” (Spec., ¶2). The specification states: “The present disclosure relates to indole compounds . . . that exhibit 5-HT2A receptor agonist activity while exhibiting low 5HT2B receptor agonist activity.” (Id., ¶6). The specification provides pharmacological screening in the context of serotonin receptor 5-HT2. (Id., ¶¶48–52).
The nature of the invention generally relates to the pharmaceutical art and more specifically to a method of administering a compound of claim 30 to a patient to exhibit 5-HT2A receptor agonist activity.
The state of the prior art for indole compounds having structural similarity to psilocybin is generally understood. The specification states: “As agonists of the 5-HT2A and 5-HT2C receptors, psilocybin and psilocin have been recognized for their therapeutic potential.” (Id., ¶4). The claimed invention is directed to analogs of psilocybin, with the objective of providing safter drugs that maintain 5-HT2A receptor agonist activity but that lack cardiotoxic and 5-HT2B agonist activity. (Id.). Generally, to treat a disease, one of skill in the art must identify a biological target for affecting the disease, demonstrate a first drug candidate some way modulates the normal processes of the biological target, and demonstrate that a subject would benefit from such modulation without detrimental side effects. Typically, the process includes in vitro laboratory screening, in vivo testing, and clinical testing. Once that process has been successfully completed by the first drug candidate, subsequent drug candidates can benefit from the established proof of concept if a substantial correlation can be established between the first drug candidate and the subsequent drug candidates.
Examiner is unaware of any evidence that analogs of psilocybin can treat any disorder, such as a disorder that is not considered to be associated with serotonin receptors.
The level of one of ordinary skill may be found by inquiring into: (i) the type of problems encountered in the art; (ii) prior art solutions to those problems; (iii) the rapidity with which innovations are made; (iv) the sophistication of the technology; and (v) the education level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 855, 962 (Fed. Cir. 1986). All of the factors may not be present in every case, and one or more of them may predominate. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983). Based on the typically high education level of workers in the pharmaceutical art and the high degree of sophistication required to solve problems encountered in the art, Examiner finds a person having ordinary skill in the art would have at least a college degree in chemistry, biology, biochemistry, pharmacology, or a related field, and several years of experience.
The level of predictability in the art is generally unpredictable. The relevant art requires each potential drug candidate to be assessed for physiological activity. In re Fisher, 427 F.2d 833, 166 USPQ 18, 24 (CCPA 1970). The more unpredictable an area is the more specific disclosure is necessary to satisfy the statutory requirement. MPEP § 2164.02(II) explains that a correlation between the claimed invention and the evidence provided in an application, along with a correlation between the evidence and the models recognized in the art, are required:
“Correlation” as used herein refers to the relationship between in vitro or in vivo animal model assays and a disclosed or a claimed method of use. An in vitro or in vivo animal model example in the specification, in effect, constitutes a “working example” if that example “correlates” with a disclosed or claimed method invention. If there is no correlation, then the examples do not constitute “working examples.” In this regard, the issue of “correlation” is also dependent on the state of the prior art. In other words, if the art is such that a particular model is recognized as correlating to a specific condition, then it should be accepted as correlating unless the examiner has evidence that the model does not correlate. Even with such evidence, the examiner must weigh the evidence for and against correlation and decide whether one skilled in the art would accept the model as reasonably correlating to the condition. In re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995) (reversing a USPTO decision based on finding that in vitro data did not support in vivo applications).
Further, treatments may be effective for some subjects and ineffective for other subjects. Thus, each candidate for pharmaceutical medicine must be evaluated on its own even when a nexus to an existing drug or class of drugs has been established.
The amount of direction provided by the inventor relate to the properties of the psilocybin analogs in the context of serotonin receptors. The specification states the compounds are “selective agents at serotonin receptors.” (Spec., ¶2). The specification states: “The present disclosure relates to indole compounds . . . that exhibit 5-HT2A receptor agonist activity while exhibiting low 5HT2B receptor agonist activity.” (Id., ¶6). The specification provides pharmacological screening in the context of serotonin receptor 5-HT2. (Id., ¶¶48–52).
The existence of working examples relate to in vitro assays. There are no working examples demonstrating an in vivo treatment of a specific disorder in a patient. Without a disclosure of the claimed method, enablement must be established via correlation.
The quantity of experimentation needed to make or use the invention based on the content of the disclosure is extensive, as it includes in vitro and in vivo screening for each and every disorder existing at the time of invention. As claimed, the scope of such diseases is essentially unbound. Therefore, the quantity of experimentation is essentially unlimited.
Scope of Enablement Conclusion
In view of the Wands factors discussed above, the disclosure of the instant application does not reasonably enable a person having ordinary skill in the art to use the full scope of the claimed invention. The nature of the invention is sophisticated, the state of the prior art is established for serotonin-related disorders but not any disorder, the breadth of the claims is broad in scope, the art is unpredictable, the guidance provided in the specification is limited to serotonin receptor agonist activity, and there are no working examples directed to treating a disorder in a patient as claimed. Accordingly, when the evidence is considered as a whole, undue experimentation would be required to practice the full scope of the claimed invention.
Examiner recommends amending the claim to recite specific disorders that are supported by correlation to psilocybin or analogs of psilocybin.
Claim Rejections - 35 U.S.C. § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(i) Claim 21 is rejected under 35 U.S.C. §§ 102(a)(1) and (a)(2) as being anticipated by US 2009/0318527 (“Sard”).
Sard discloses compounds according to instant Formula I when:
R1 = alkyl; R3 and R4 = alkyl;
Z = H; a, c, d, e, f = H
b = halogen; R2 = H.
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351
254
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(Sard, FIG. 1).
(ii) Claim 21 is rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Blair et al., J. Med. Chem. (2000), 43, 4701–4710 (“Blair”) [IDS].
Blair discloses compound 3 according to instant Formula I when:
R1 = H; R3 and R4 = alkyl;
Z = H; a, c, d, e, f = H
b = halogen; R2 = H.
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177
505
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(Blair, p.4702).
(iii) Claim 21 is rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Khan et al., Org. Lett. (2015), 17, 3718–3721 (“Khan”).
Khan discloses compound 4 according to instant Formula I when:
R1 = H; R3 and R4 = H; Z = alkyl;
a, c, d, e, f = H;
b = halogen; R2 = H.
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95
137
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(Khan, p.3718).
(iv) Claims 22–26 are rejected under 35 U.S.C. §§ 102(a)(1) and (a)(2) as being anticipated by US 8,912,220 (“Elder”).
Elder discloses compound 3 according to instant Formula I when:
R1 = alkyl; R3 and R4 alkyl;
a, c, d, e, f = H;
Z = alkyl; R2 = substituted alkyl.
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174
155
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(Elder, col.186).
(v) Claim 34 is rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Heath-Brown et al., J. Chem. Soc. (1965), 7165–78 (“Heath-Brown”).
Heath-Brown discloses compound 13 according to instant Formula II when:
R1 = H; R3 and R4 = H; Z = H;
a, b, c, d, e, f = H; R2 = alkyl.
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168
257
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(Heath-Brown, p.7170).
Allowable Subject Matter
Claim 35 is allowed.
Claims 27–31 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.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jason Nolan at (571) 272-2480. The examiner can normally be reached Monday through Friday between 9:00–5:00.
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/JASON M. NOLAN/Patent Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623
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