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
Claims 1, 5 and 9-21 are pending in the application as of the preliminary amendment filed 05/22/2026. Claims 2-4 and 6-8 are cancelled. Claims 1, 5 and 9-21 are examined herein.
Priority
This application is a CON of 18/325,655 filed 05/30/2023 and claims priority to PRO 63/355,576 filed 06/25/2022.
Applicant’s claim for the benefit of a prior filed application under 35 U.S.C. 119(e) or under or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or earlier-filed nonprovisional application or provisional application for which benefit is claimed). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/355,576 fails to provide adequate support and enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The ‘576 application does not have support for all the recited crystalline forms of a salt or polymorph of R-MDMA, as instantly claimed. The ‘576 application also does not disclose the specific crystalline salt forms with the characteristic X-ray powder diffraction peaks. Accordingly, claims 1, 5 and 9-21 have an effective filing date of 05/30/2023, the filing date of the parent 18/325,655 application.
Information Disclosure Statement
The information disclosure statements submitted on 05/22/2026 and 03/20/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claim 5 is objected to because of the following informalities:
The period at the end of claim 5 appears to have been inadvertently deleted by the claim amendments. Please add a period at the end of claim 5.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claims 1, 5 and 18-21 are rejected under 35 U.S.C. 102(a)(1)/35 U.S.C. 102(a)(2) as being anticipated by Duncton et al. (WO 2023/092044 A2, publication date 25 May 2023 and international filing date 17 November 2022, hereinafter Duncton, in the IDS).
Regarding instant claims 1, 5, 18 and 20, Duncton teaches solid forms of (R)-MDMA including crystalline forms of the salts, as well as polymorphs of the solid forms (Pg. 2, Lns. 9-12; Pg. 20, Lns. 24-33). Duncton teaches embodiments of a pharmaceutical composition, comprising a solid form of a disclosed compound or a salt thereof, and a pharmaceutically acceptable excipient (Pg. 4, Lns. 1-3). Duncton teaches the salt may be formed from an acid that includes maleic acid, phosphoric acid and L-malic acid (Pg. 3, Lns. 9-17; Pg. 19, Table 1).
Duncton teaches solid forms of MDMA maleate Form I (Pg. 24, Ln. 1 - Pg. 26, Ln. 1; Table 3; FIG. 2).
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397
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The R-MDMA maleate form of Duncton anticipates the instant R-MDMA maleate form since the XRPD peaks (expressed as 2θ) match that of instant claims 1 and 18 (as highlighted above). The examiner notes that the instant specification does not define the term “about” with respect to XRPD values and therefore, the recitation of “about” in the claims do not impose strict numerical boundaries.
Duncton teaches solid forms of MDMA malate (Pg. 32, Ln. 3 - Pg. 34, Ln. 1; FIG. 6).
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The R-MDMA malate form of Duncton anticipates the instant R-MDMA malate form since the XRPD peaks (expressed as 2θ) match that of instant claims 1 and 20 (as highlighted above). The examiner notes that the instant specification does not define the term “about” with respect to XRPD values and therefore, the recitation of “about” in the claims do not impose strict numerical boundaries.
Regarding instant claims 19 and 21, Duncton anticipates the crystalline form R-MDMA maleate and malate salts as in instant claims 18 and 20 respectively. By virtue of the inherent property of these crystalline salt forms, their X-ray diffraction patterns will be substantially similar to that of FIG. 38 and FIG. 39 respectively. The examiner notes that the instant specification does not define the term “substantially” with respect to XRPD values and therefore, the recitation of “substantially” in the claims do not impose strict numerical boundaries.
According to MPEP 2112.01(II), "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See also MPEP 2141.02(V), In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) ("From the standpoint of patent law, a compound and all its properties are inseparable.").
Therefore, in the absence of evidence to the contrary, Duncton anticipates the limitations of instant claims 19 and 21. The burden of proof shifts to the Applicant to prove that the prior art does not possess the instantly claimed crystalline parameters of the R-MDMA maleate and malate salts.
The following table is given for easy comparison.
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183
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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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 5 and 9-17 are rejected under 35 U.S.C. 103 as being unpatentable over Duncton et al. (WO 2023/092044 A2, publication date 25 May 2023 and international filing date 17 November 2022, hereinafter Duncton, in the IDS).
Regarding instant claims 1 (with respect to the phosphate salt forms), 5, 9, 14 and 16, Duncton teaches solid forms of (R)-MDMA including crystalline forms of the salts, as well as polymorphs of the solid forms (Pg. 2, Lns. 9-12; Pg. 20, Lns. 24-33). Duncton teaches embodiments of a pharmaceutical composition, comprising a solid form of a disclosed compound or a salt thereof, and a pharmaceutically acceptable excipient (Pg. 4, Lns. 1-3). Duncton teaches the salt may be formed from an acid that includes maleic acid, phosphoric acid and L-malic acid (Pg. 3, Lns. 9-17; Pg. 19, Table 1).
Duncton teaches solid forms of MDMA phosphate (Pg. 26, Ln. 3 - Pg. 30, Ln. 1; Table 4; Table 5; FIG. 4; FIG. 47).
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Duncton teaches MDMA phosphate salts that substantially overlap in the recited X-ray diffraction peaks (expressed as 2θ). Duncton teaches the desired polymorph may be produced by techniques as described herein and also are known to persons of ordinary skill in the art. Such techniques include, but are not limited to, crystallization in particular solvents and/or at particular temperatures, among others (Pg. 21, Lns. 10-14). Duncton teaches the solid forms may be selected to have one or more desired properties, particularly improved properties, such as physical properties, chemical properties, pharmacokinetic properties, compared to an amorphous sample and/or a previously known crystalline form (Pg. 3, Lns. 21-32). Moreover, it is well known in the art and routine for a skilled artisan to explore appropriate solvents and conditions to purify and isolate pharmaceutical lead compounds and their salts.
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 Duncton, to have explored other solvents to crystallize the R-MDMA phosphate salts, to arrive at the crystalline forms of the instant invention, with a reasonable expectation of success.
According to MPEP 2144.05(II)(A), "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A) states "It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007).
In the instant case, Duncton teaches solid forms of MDMA phosphate. Duncton teaches the desired polymorph may be produced by techniques as described herein and also are known to persons of ordinary skill in the art, such as, crystallization in particular solvents and/or at particular temperatures, among others. Duncton teaches the solid forms may be selected to have one or more desired properties, particularly improved properties, such as physical properties, chemical properties, pharmacokinetic properties, compared to an amorphous sample and/or a previously known crystalline forms. Therefore, one of ordinary skill in the art would be motivated to prepare additional crystalline forms of the phosphate salt of R-MDMA, to arrive at the crystalline forms of the instant claims. Doing so would have been well within the skill of one of ordinary skill in the pharmaceutical arts, through routine experimentation.
Therefore, the teachings of Duncton render the R-MDMA phosphate salt forms of the instant claims 1, 9, 14 and 16 prima facie obvious.
Regarding instant claims 10-13, 15 and 17, the teachings of Duncton render the crystalline R-MDMA phosphate forms of instant claims 9, 14 and 16 prima facie obvious. Therefore, in the absence of evidence to the contrary, these crystalline phosphate forms would necessarily exhibit substantially the same X- ray diffraction pattern (expressed as 2θ), thermogravimetric analysis values and DSC values, as recited in instant claims 10-13, 15 and 17.
According to MPEP 2112.01(II), "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See also MPEP 2141.02(V), In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) ("From the standpoint of patent law, a compound and all its properties are inseparable.").
The burden of proof shifts to the Applicant to prove that the prior art does not render obvious the instantly claimed crystalline parameters of the R-MDMA phosphate salts.
The following table is given for easy comparison.
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Conclusion
Claims 1, 5 and 9-21 are rejected.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PADMAJA S RAO whose telephone number is (571)272-9918. The examiner can normally be reached 9:00-5:30pm EDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney L Klinkel can be reached on (571) 270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PADMAJA S RAO/Examiner, Art Unit 1627
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