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 .
Current Status of 18/573,074
This Office action is responsive to the amended claims of 12/21/2023, claims 1, 2, 4, 6, 7, 9-15, 19-22, 24, 26, 29, and 30 are pending in the application and have been examined on the merits.
Priority
The instant application is a national stage entry of PCT/CN2022/100435, filed 06/22/2022, which claims priority to Chinese patent applications CN202110694497.1, filed 06/22/2021, CN202210002094.0, filed 01/04/2022, and CN202210665753.9, filed 06/13/2022.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 04/01/2024 and 10/10/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
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.
Claim 30 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a method of inhibiting Tyk2 JH2 with compounds 1-35, does not reasonably provide enablement for a method of treating a disease related to Tyk2 JH2 in a subject in need thereof using any compound embodied by the Markush compound of claim 1. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
The factors to be considered in determining whether a disclosure meets the enablement requirements of 35 U.S.C. 112, first paragraph, have been described in In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir., 1988). The court in Wands states, “Enablement is not precluded by the necessity for some experimentation, such as routine screening. However, experimentation needed to practice the invention must not be undue experimentation. The key word is ‘undue’, not ‘experimentation’” (Wands, 8 USPQ2sd 1404). Clearly, enablement of a claimed invention cannot be predicated on the basis of quantity of experimentation required to make or use the invention. “Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations” (Wands, 8 USPQ2d 1404). Among these factors are: (1) the nature of the invention; (2) the breadth of the claims; (3) the state of the prior art; (4) the predictability or unpredictability of the art; (5) the relative skill of those in the art; (6) the amount of direction or guidance presented; (7) the presence or absence of working examples; and (8) the quantity of experimentation necessary. While all of these factors are considered, a sufficient amount for a prima facie case is discussed below.
(1) The nature of the invention and (2) the breadth of the claims:
The claims are drawn to a method of treating a disease related to Tyk2 JH2 through administering a compound of claim 1 to a subject in need thereof. Thus, the claims taken together with the specification imply that the method can treat any disease related to Tyk2 JH2 using any compound of the Markush group of claim 1. Thus, the claim is extremely broad.
(3) The state of the prior art and (4) the predictability or unpredictability of the art:
Wrobleski teaches that the discovery of the Tyk2 JH2 inhibitor BMS-986165 was a formidable challenge achieved only through late stage optimization using structure guided design and water displacement strategy (Abstract). This compound was shown to have unprecedented selectivity for Tyk2 JH2, underpinning the unpredictability in the art to design compounds that are selective for Tyk2 JH2 (Abstract).
(5) The relative skill of those in the art:
The artisan would have experience in organic chemistry, medicinal chemistry, pharmaceutical sciences, or a related field. The artisan would have experience in the design, synthesis, and evaluation of small-molecule kinase inhibitors. The artisan would be familiar with biochemical kinase assays, cellular signaling assays, and pharmacokinetic evaluation of small-molecule drug candidates. The technical expertise of the artisan would not overcome the unpredictability in the art regarding the development of Tyk2 JH2 inhibitors and their therapeutic effects. Based on the limited biochemical and cellular assay data provided in the instant application, the artisan would be unable to determine which compounds encompassed by the broad Markush genus of claim 1 would be capable of treating diseases as claimed without empirical testing.
(6) The amount of direction or guidance presented and (7) the presence or absence of working examples:
The specification has provided guidance for Tyk2 JH2 inhibition for compounds 1-35 (Assay Example 1, [00551-00554]); in vitro cellular activity in hPBMC for compound 1-4, 8, and 9 (Assay Example 2, [00555-00558]); and a pharmacokinetic profile in Balb/c mice for compound 1 (Assay Example 3, [00559-00565]).
However, the specification does not provide any examples demonstrating treatment of any disease related to Tyk2 JH2 using any compound encompassed by the Markush group of claim 1. The experimental data discussed above demonstrates biochemical Tyk2 JH2 inhibition and cellular pathway inhibition, but do not demonstrate therapeutic treatment of disease.
(8) The quantity of experimentation necessary:
Considering the state of the art as discussed by the references above, particularly with regards to the unpredictability in designing Tyk2 JH2 selective inhibitors and the high unpredictability in the art as evidenced therein, and the lack of guidance provided in the specification, one of ordinary skill in the art would be burdened with undue experimentation to practice the invention commensurate in the scope of the claims.
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 1, 2, 4, 6, 7, 9-15, 19-22, 24, 26, 29, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Liu (WO 2021/222153 A1, found in IDS filed 04/01/2024) in view of Han (Han, Yu, et al. "Application of sulfoximines in medicinal chemistry from 2013 to 2020." European Journal of Medicinal Chemistry 209 (2021): 112885.).
Liu teaches compounds of formula I
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that are useful in modulation of IL-2, IL23 and/or IFNa by inhibiting Tyk2 (Abstract, pg. 6, lines 2-4). The reference teaches that Y is N or CH (pg. 7, line 7). Liu discloses example compound 111
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283
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(pg 105) which reads on the instantly claimed compounds of formula (II) with the following substitutions: X1 is CH; N2 is N; R3 is H, n is 3; R4 is -C(=O)R41, R41 is a C3 cycloalkyl (cyclopropyl); R5 is H; R6 is -NH-C1 alkyl optionally substituted with 3 Rd, each Rd is deuterium; and ring A is
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80
48
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. Liu teaches that R3 is a 5-14 membered mono or bicycle heterocycle containing 1-4 heteroatoms selected from N, O, and S (pg 7, lines 14-15), and discloses compound 17
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(pg. 49) which has an alternative structure of R3 in comparison to compound 111. The reference also teaches a method of treating a disease comprising administering to a patient in need thereof a therapeutically effective amount of the claimed compounds (Claim 10). These diseases are specified as being inflammatory or autoimmune disease is multiple sclerosis, rheumatoid arthritis, inflammatory bowel disease, systemic lupus erythematosus, psoriasis, psoriatic arthritis, Crohn’s Disease, Sjogren’s syndrome or scleroderma (Claim 11) and identifies these diseases as being associated with disfunction of Tyk2 (pg. 4, line 29 – pg. 6, line 29). Lui does not teach the sulfoximine functionality attached to ring A.
Han teaches that sulfoximines are isosteres of sulfones which have advantageous properties (pg. 2, left Col, first para; pg. 3, bottom paragraphs). Table 10 (pg 7, left Col) discloses N-linked sulfoximines including two examples where the alkyl groups bound to the central sulfur atom are taken together to form a five-membered heterocycle. These teachings establish that N-linked sulfoximines are recognized in the art as isosteric replacements for sulfone groups.
The artisan would have experience in organic chemistry, medicinal chemistry, pharmaceutical sciences, or a related field. The artisan would have experience in the design, synthesis, and evaluation of small-molecule kinase inhibitors. The artisan would be familiar with biochemical kinase assays, cellular signaling assays, and pharmacokinetic evaluation of small-molecule drug candidates. The artisan would be familiar with isosteric replacement strategies.
The artisan would have been motivated to substitute the sulfone of Liu’s 111 with an N-linked sulfoximine because the two functional groups are recognized isosteres. Such isosteric substitutions are routinely performed in medicinal chemistry as part of structure-activity relations (SAR) studies to optimize pharmacokinetic and pharmacodynamic properties. The artisan would have reasonably expected that substitution of the sulfone with a sulfoximine would retain the overall biological activity of the molecule while potentially improving other relevant properties. Replacing the sulfone group of Liu’s 111 with a sulfoximine represents an obvious modification in the routine optimization of the compound.
Regarding the compounds of instant claim 29, these compounds are obvious derivatives of the known Tyk2 inhibitor compounds disclosed in Liu. Consider the following compound of instant claim 29
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. This compound is identical to Liu’s 111 with the exception of ring A being a pyrazine as opposed to a pyrimidine in 111. However, Liu expressly teaches pyrazine as a suitable R3 group and provides examples incorporating this ring system (see compound 17 above). Liu further indicates that these ring systems are interchangeable embodiments of the invention. The artisan would have been motivated to substitute they pyrimidine ring of compound 111 with a pyrazine ring because both are taught as being suitable embodiments of the same scaffold. The artisan would have reasonably expected that either ring structure would provide a compound retaining the desired Tyk2 inhibitory activity.
Conclusion
No claims are allowed.
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/C.K.E./Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625