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 .
Priority
The instant application is a CON of application 15/730,694 (now US 12,016,849) filed 11 October 2017. Acknowledgement is made of the Applicant’s claim of domestic priority to provisional US application 62/407,362 filed 12 October 2016.
Examiner's Note
Applicant's amendments and arguments filed 10 February 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant's response, filed 10 February 2026, it is noted that no have been amended and no new matter or claims have been added.
Status of the Claims
Claims 1-16 are pending.
Claims 1-16 are rejected.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 and 14-16 stand rejected under 35 U.S.C. 103 as being unpatentable over Evans (US 4,315,927) in view of Clark et al. (US 6,582,722) in view of Dwivedi et al. (US 2016/0194280).
Evans teaches a structure of the following formula wherein M represents the metallic cation and n is the valence (Abstract)
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Evans further teaches that the above complex can be synthesized from picolinic acid and that the cation can be any bivalent or trivalent metallic trace element essential to the nutritional well-being of humans (col 2, lns 30-53). The complex is formed by the simple method of adding picolinic acid to an aqueous solution of a water-soluble salt of the desired metal wherein, in most cases, the picolinate will crystalize (col 2, lns 55-61). The reaction can be heated with continuous stirring to form the precipitate after which it is cooled (col 3, lns 62-65). The product may be recrystallized and dried (col 2, lns 63-65).
Evans does not teach wherein the metal is magnesium. Evans does not teach wherein the magnesium source is magnesium acetate tetrahydrate.
Clark teaches the importance of magnesium in overall nutrition as it affects healthy bone growth, muscle function, cardiac function, blood clotting, blood pressure, heart rhythm, permeability of cell membranes, acid-base balance, and CO2 transport (col 1, lns 23-28). Magnesium, in the form of magnesium picolinate, can be added to food to provide a source of nutritional magnesium with high bioavailability (col 2, ln 66- col 3, ln 8).
Dwivedi teaches formation of magnesium salt of an acid, saroglitazar, to form saroglitazar magnesium by reacting the acid with a magnesium source [0029]. The magnesium source can be magnesium acetate tetrahydrate, magnesium chloride, or magnesium methoxide [0103]. It is noted that the saroglitazar precursor can be hydrolyzed with a base such as sodium hydroxide [0101] to form the sodium salt of the acid prior to reaction with the magnesium source [0027-0029]. Specifically, in Example 4, the acid is reacted with sodium hydroxide in water and then the aqueous layer is reacted with the magnesium source before vacuum drying [0197]. The physical properties of the amorphous form of the salt may provide better bioavailability over the crystalline form and may be more useful for formulations that have better stability, solubility, and storage [0016].
It would have been prima facie obvious to prepare the crystalline picolinate salt using the method of Evans, which can comprise any bivalent or trivalent metallic trace element essential to the nutritional well-being of humans, and look to Clark which teaches the importance of magnesium in overall nutrition. The method comprises the steps of combining the agents and heating, forming a filtrate, filtering, recrystallizing, and drying, which implies removal of water. Regarding instant claim 5, Evans teaches that the reaction can be heated with continuous stirring to form the precipitate but does not provide a suitable range of temperature. That being said and in lieu of objective evidence of unexpected results, the temperature can be viewed as a variable which achieves the recognized result of successfully forming a precipitate. The optimum or workable range of temperature can be accordingly characterized as routine optimization and experimentation (see MPEP 2144.05 (II)B). “[Discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Accordingly, it would have been obvious to optimize the conditions and heat the reaction to a reflux temperature in order to obtain a precipitate.
Clark further teaches the high bioavailability of magnesium picolinate. For the source of magnesium, it would have been obvious to look to Dwivedi, which teaches that carboxylic acids can be made into the corresponding magnesium salt by mixing with magnesium acetate tetrahydrate. Additionally, it would have been obvious to first neutralize the acid with sodium hydroxide to form sodium picolinate, as taught by Dwivedi, before reacting with the magnesium source, which can alternatively be magnesium chloride. Generally, it is prima facie obvious to substitute one equivalent component or process for another, each of which is taught by the prior art to be useful for the same purpose (see MPEP 2144.06). Since the magnesium source is in an aqueous solution, it would necessarily be in the hydrated form. Dwivedi also teaches that the amorphous form may have improved bioavailability. Therefore, it would have been further obvious to manufacture the salt of Evans so that it is amorphous rather than crystalline. The prior art does not teach or require the method of making the picolinate salt requiring a step of removing heavy metals. The resulting method renders obvious instant claims 1-5 and 14-16.
Claims 6-13 stand rejected under 35 U.S.C. 103 as being unpatentable over Evans (US 4,315,927) in view of Clark et al. (US 6,582,722) in view of Pearson et al. (US 6,288,106).
Evans and Clark, as applied supra, are herein applied for their teachings of a method of making a magnesium picolinate composition.
Evans does not teach wherein the magnesium source is magnesium ethoxide.
Pearson teaches that to form a magnesium salt of an acid (lipoic acid), an anhydrous ethanol solution of magnesium ethoxide can be added to an anhydrous ethanolic solution of lipoid acid, stirred, and then evaporated to yield the final salt (col 13, Ex. 1).
It would have been prima facie obvious to prepare the crystalline picolinate salt using the method of Evans and Clark, as described above, and modify the source of magnesium to be magnesium ethoxide, which Pearson teaches can be mixed with an acid in an anhydrous ethanolic solution to form the desired magnesium salt. Since any magnesium source is suitable for use in Evans, it would have been obvious to use the magnesium ethoxide of Pearson to form magnesium picolinate. Regarding instant claim 8, Pearson teaches adding the magnesium ethoxide as a solution in ethanol, however the solvent system is the same for both the magnesium and the acid, therefore there would have been a reasonable expectation of success to add the magnesium ethoxide as a solid into the anhydrous ethanolic solution of picolinic acid to achieve the same product. Regarding claim 13, the salt product is taught as being dried, thus a total removal of water is presumed. The prior art does not teach or require the method of making the picolinate salt requiring a step of removing heavy metals. As such, claims 6-13 are obvious in view of the prior art.
Response to Arguments
Applicant's arguments filed 10 February 2026 have been fully considered but they are not persuasive. The Applicant argues, on page 2 of their remarks, that neither Evans nor Dwivedi teach pharmaceutical quality magnesium picolinate. Regarding Clark, the Applicant argues that food/beverage quality is taught, not pharmaceutical quality.
In response, the purpose of Evans is to prepare and administer, to animals, synthetic complexes of picolinic acid (col 1, ln 65- col 2, ln 14). Evans further teaches administering these trace elements in a safe, physiological form for therapeutic purposes (col 2, lns 15-16). As such, providing the picolinic acid in a pharmaceutically acceptable form and quality would have been obvious based on the disclosed uses for said complex. Anything less than pharmaceutical quality could result in ineffectiveness or safety issues when the intention of Evans is to provide a therapeutic agent to a patient in need thereof.
The Applicant argues, on page 3 of their remarks, that Evans is silent to magnesium sources. The Applicant further argues that the metals used in Evans (zinc, iron, chromium, cobalt, copper, and manganese) are significantly different that magnesium.
In response, the Applicant is erroneously pointing to narrow embodiments expressly disclosed within the prior art reference as representing the sum total of information conveyed by each. Art is art, not only for what it expressly teaches, but also for what it would reasonably suggest to the skilled artisan, including alternative or non-preferred embodiments (see MPEP § 2123). Evans teaches that the cation may be ANY bivalent or trivalent metallic trace element essential to nutritional well-being or humans, which includes magnesium despite not being listed as a preferred element.
The Applicant argues, on page 3 of their remarks, that saroglitazar acid of Dwivedi is significantly different from picolinic acid, structurally.
In response, despite the structural differences, Dwivedi is applied for its teachings that carboxylic acids can be made into the corresponding magnesium salt by mixing with magnesium acetate tetrahydrate.
The Applicant argues, on page 4 of their remarks, that Dwivedi uses sodium hydroxide to hydrolyze acid ethyl ester to form acid, not to neutralize the acid.
In response, Dwivedi teaches that a base, namely sodium hydroxide, can be used to obtain Formula IB wherein M is a cation from Formula IB wherein M is hydrogen. This transformation effectively converts and acid to its metal salt form, which is what the Applicant is doing in instant claim 15. The resulting sodium salt can then be reacted with another metal ion, such as magnesium, to exchange cations resulting in a magnesium salt of an acid, as required in the instant claims.
The Applicant argues, on pages 5-6 of their remarks, that Pearson uses anhydrous ethanol of lipoic acid, NOT an aqueous ethanolic solution of lipoic acid. The Applicant further argues that Evans cannot be combined with Pearson because the former art teaches an aqueous solution and the latter teaches an anhydrous solution.
In response, the inclusion of the term “aqueous” was a typographical error by the Examiner and has been corrected to recite “anhydrous.” The above rejection is still maintained since it would have been obvious to modify Evans to include the magnesium ethoxide of Pearson since any magnesium source is suitable for use in Evans. Regarding the solvent choice, Pearson teaches anhydrous ethanol but Evans teaches that water can be used if the salt is water soluble, thus either solvent, or both, would have been obvious to use in the preparation method.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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