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 .
DETAILED ACTION
This office action is a response to Applicant’s amendments/remarks after non-final rejection filed 3/13/2026.
As filed, claims 1-12 are pending; claims 14-23 are withdrawn; and claim 13 is cancelled.
Response to Amendments/Remarks
Applicant’s amendments/remarks, filed 3/13/2026, with respect to claims 1-12, have been fully considered and are entered. The status for each rejection in the previous Office Action is set out below.
The § 102(a)(1)102(a)(2) rejection of claims 1-3 and 5-12 by Silverman1 is maintained because Applicant’s remarks are not persuasive. As mentioned in the previous office action, the patentability of claims 1-3 and 5-12 is based on the product itself, and not its method of preparation because of the product by process construction. Accordingly, the instant claims, given the broadest reasonable interpretation, include a product comprising a compound of instant formula (I) and zero percent or absence of the compound of instant formula (X) (i.e. byproduct). Further, following the guidance in MPEP 2131.02(III), a person of ordinary skill in the art, reading the disclosure of Silverman1, would “at once envisage” that a complete conversion of compound 127 of Silverman1 would meet all the limitations of the instant product, which comprises a compound of instant formula (I) and zero percent or absence of the compound of instant formula (X) (i.e. byproduct). The synthesis and the aqueous workup of compound 127 of Silverman1, mentioned in Applicant’s remarks filed 3/13/2026 and in declaration by Dr. Kilaru Srinivasu filed 11/7/2025, are not relevant to the patentability of the claims because the instant claims are not drawn to a process of making-type claims.
For the reasons stated above, in addition to the rationale of the rejection, as shown below, the 102(a)(1)/102(a)(2) rejection is maintained.
The § 102(a)(1)102(a)(2) rejection of claims 1-3 and 5-12 by Silverman is maintained for the reasons stated in paragraph #3, as shown above.
The § 103(a) rejection of claims 1-12 by Wagner is maintained for the reasons stated in paragraph #3, as shown above. In addition, a person skill in the art (i.e. organic chemist) would have the knowledge and skill to resolve a racemic mixture of enantiomers in a single enantiomeric form (e.g. R or S enantiomer) because the production of one particular optical isomer is itself motivation to produce the opposite optical isomer because all three substrates would need to be screened for therapeutic potential (see Rydzewski, Real World Drug Discovery, 2008, pg. 42-43). Because the isolation of both optical isomers is obvious in drug development, the Examiner finds that one particular isomer of the instant claims (e.g. ee of at least 98%) is prima facie obvious over their racemic mixture counterparts.
The nonstatutory obviousness-type double patenting (ODP) rejection of claims 1-12 by conflicting U.S. Patent No. 12,325,707 is maintained for the reasons stated in paragraph #3, as shown above.
The nonstatutory obviousness-type double patenting (ODP) rejection of claims 1-9, 11, and 12 by conflicting U.S. Patent No. 12,285,432 is maintained because Applicant’s remarks failed to address this ODP rejection. For the reasons stated in the previous office action, as shown below, the ODP rejection is maintained.
Claim Interpretation
The Examiner finds the claim construction of claims 1-12 as a product by process limitation (i.e. the product and its preparation method). In other words, the patentability of the instantly claimed product is based on the product itself, and not its method of preparation.
The Examiner interprets the limitation, “wherein the product comprises less than 0.30% of a compound of Formula X,
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” in claim 1 can include instantly claimed product having zero percent or absence of the compound of instant formula X.
Claim Rejections - 35 USC § 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.
Claims 1-3 and 5-12 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by U.S. Patent No. 9,249,149, hereinafter Silverman1. See IDS filed 6/7/2024.
Regarding claims 1-3 and 5-12, Silverman1, for instance, teaches the complete conversion of the following compound (i.e. no impurity or byproduct) and resulting in a white solid (i.e. product) with >99% ee and deuterium incorporation of at least 99.5%. All of which meet all the limitations of these claims.
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(column 32, lines 5-15, compound 127)
Wherein: instant variables Y1-Y3 are deuterium.
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(column 34, lines 1-20)
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(column 4, lines 7-17)
Regarding claims 2, 3, and 5-7, the claims are drawn to limitations further limiting the preparation process of the compound of instant formula (I), which are not given patentable weight because the patentability of the claims is on the product itself, not the process of preparation.
Regarding claims 8-10, the Examiner, according to the guidance in MPEP 2131.02(III), also finds that a person of skill in the art, reading the disclosures of Silverman1 (as shown below), would “at once envisage” the instantly claimed arrangement or combination, which is the deuterium incorporation of at least 99.5%.of Silverman1.
Claims 1-3 and 5-12 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by U.S. Patent Application Publication No. 2015/0197525, hereinafter Silverman. See PTO-892 form mailed on 10/11/2024.
Regarding claims 1-3 and 5-12, Silverman, for instance, teaches the complete conversion of the following compound (i.e. no impurity or byproduct) and resulting in a white solid (i.e. product) with >99% ee and deuterium incorporation of at least 99.5%. All of which meet all the limitations of these claims.
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(pg. 17, paragraph 0131, compound 127)
Wherein: instant variables Y1-Y3 are deuterium.
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(column 18, paragraph 0140)
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(pg. 2, paragraph 0021
Regarding claims 2, 3, and 5-7, the claims are drawn to limitations further limiting the preparation process of the compound of instant formula (I), which are not given patentable weight because the patentability of the claims is on the product itself, not the process of preparation.
Regarding claims 8-10, the Examiner, according to the guidance in MPEP 2131.02(III), also finds that a person of skill in the art, reading the disclosures of Silverman (as shown below), would “at once envisage” the instantly claimed arrangement or combination, which is the deuterium incorporation of at least 99.5%.of Silverman.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Foreign Patent Application Publication No. WO2017/192905, hereinafter Wagner. See PTO-892 form mailed on 10/11/2024.
Regarding claims 1-12:
Determining the scope and contents of the prior art:
Wagner, for instance, teaches the elected species or pharmaceutical composition thereof, which is shown below, wherein the deuterium incorporation can be at least 99.5%.
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(paragraph 75, compound I)
Wherein: instant variable Y1 is H; and instant variables Y2 and Y3 are deuterium.
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(pg. 8, paragraph 29)
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(pg. 9, paragraph 29)
Regarding claims 2, 3, and 5-7, the claims are drawn to limitations further limiting the preparation process of the compound of instant formula (I), which are not given patentable weight because the patentability of the claims is on the product itself, not the process of preparation.
Ascertaining of the difference between the prior art and the claim at issue:
Wagner, for instance, did not explicitly teach the following:
abovementioned pharmaceutical composition comprises less than 0.30% of a compound of instant formula (X); and
the compound of instant formula (I) has an ee of at least 98%.
Finding of prima facie obviousness --- rationale and motivation:
The Examiner finds that the purification of the abovementioned compound (i.e. R-enantiomer) of Wagner to a single enantiomeric R form (e.g. 100% pure product, 0% impurity/byproduct) having an ee of at least 98% would have been prima facie obvious to the skilled artisan, motivated by the desire to eliminate impurities or byproducts in the compound that would be reasonably expected to adversely affect its overall biological activity, function or stability. As directed by the MPEP at §2144.04(VII), “Pure materials are novel vis-à-vis less pure or impure materials because there is a difference between pure and impure materials. Therefore, the issue is whether claims to a pure material are unobvious over the prior art. In re Bergstrom, 427 F.2d 1394, 166 USPQ 256 (CCPA 1970). The mere purity of a product, by itself, does not render the product unobvious. Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). Factors to be considered in determining whether a purified form of an old product is obvious over the prior art include whether the claimed chemical compound or composition has the same utility as closely related materials in the prior art, and whether the prior art suggests the particular form or structure of the claimed material or suitable methods of obtaining that form or structure. In re Cofer, 354 F.2d 644, 148 USPQ 268 (CCPA 1966)" (emphasis added).
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
The instant claims are drawn to drawn to a product by process, wherein the product comprises a compound of instant formula (I) and less than 0.30% of a compound of instant formula (X).
Claims 1-12 are rejected on the ground of nonstatutory obviousness-type double patenting (ODP) as being unpatentable over the conflicting claims of the following U.S. patents or co-pending applications. See Table below.
If the conflicting claims are in a co-pending application, then the rejection is a provisional ODP rejection because the conflicting claims have not in fact been patented.
Co-pending Application No./ U.S. Patent No.
Conflicting Claims
Provisional ODP
(Yes or No)
12,325,707
1, 2, and 13-19
No
The analysis employed for an obviousness-type double patenting rejection parallels the analysis for a determination of obviousness under 35 U.S.C. § 103. See MPEP 804; In re Braat, 937 F.2d 589, 19 USPQ 2d 1290 (Fed. Cir. 1991); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985). For this reason, the factual inquires set forth in Graham v. John Deere Co., 383 U.S. 1, USPQ 459 (1966) are employed herein.
The Graham v. Deere inquires are summarized as follows: (A) Determining the scope and contents of the patent claim relative to a claim in the application at issue; (B) Ascertaining the differences between the scope and content of the patent claim as determined in (A) and the claim in the application at issue; (C) Determine the level of ordinary skill in the pertinent art; and, (D) Evaluate any objective indicia of nonobviousness.
(A) Determining the scope and contents of the patent claim relative to a claim in the application at issue – The conflicting claims of the abovementioned U.S. patent are drawn to a process of making a compound of instant formula (I).
(B) Ascertaining the differences between the scope and content of the patent claim as determined in (A) and the claim in the application at issue - The conflicting claims of the abovementioned U.S. patent described the compound of instant formula (I) in a process of making-type claims and failed to describe the compound of instant formula (X).
(C) Determine the level of ordinary skill in the pertinent art - the level of ordinary skill in the art may be found by inquiring into: (1) the type of problems encountered in the art; (2) prior art solutions to those problems; (3) the rapidity with which innovations are made; (4) the sophistication of the technology; and (5) 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 those 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 typical education level of active workers in the field of organic chemistry, as well as the high degree of sophistication required to solve problems encountered in the art, the Examiner finds that a person of ordinary skill in the art would have at least a college degree in the field related to medicine, chemistry, and/or the pharmaceutical art and at least four years of work experience, i.e. a masters or doctorate level scientist/clinician.
(D) Evaluate any objective indicia of nonobviousness - none
Conclusion - Although the conflicting claims are not identical, one of ordinary skill in the art would recognize that they are not patentably distinct from each other. As recited above, the resulting product from the preparation method depicted in the conflicting claims of abovementioned U.S. patent is the instant product because the Examiner finds that the purification of the resulting compound from the preparation process depicted in the abovementioned U.S. patent to a single enantiomeric R form (e.g. 100% pure product, 0% impurity/byproduct) having an ee of at least 98% would have been prima facie obvious to the skilled artisan, motivated by the desire to eliminate impurities or byproducts in the compound that would be reasonably expected to adversely affect its overall biological activity, function or stability. As directed by the MPEP at §2144.04(VII), “Pure materials are novel vis-à-vis less pure or impure materials because there is a difference between pure and impure materials. Therefore, the issue is whether claims to a pure material are unobvious over the prior art. In re Bergstrom, 427 F.2d 1394, 166 USPQ 256 (CCPA 1970). The mere purity of a product, by itself, does not render the product unobvious. Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). Factors to be considered in determining whether a purified form of an old product is obvious over the prior art include whether the claimed chemical compound or composition has the same utility as closely related materials in the prior art, and whether the prior art suggests the particular form or structure of the claimed material or suitable methods of obtaining that form or structure. In re Cofer, 354 F.2d 644, 148 USPQ 268 (CCPA 1966)" (emphasis added).
The unpredictable nature of the chemical arts generally allows an assertion of similarity to be rebutted by a sufficient demonstration of nonobviousness that employs secondary considerations of objective indicia. In this case, there are no indicia of nonobviousness shown to provide evidence that product of the abovementioned U.S. patent is excluded as the instant product of the instant application. Absent indicia of nonobviousness, the Examiner finds that one of ordinary skill in the art would consider the instant product and that of the conflicting claims of the abovementioned U.S. patent to be equally effective in their objective.
This rejection is in agreement with the judicially created doctrine grounded in public policy 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.
Claims 1-9, 11, and 12 are rejected on the ground of nonstatutory obviousness-type double patenting (ODP) as being unpatentable over the conflicting claims of the following U.S. patents or co-pending applications. See Table below.
If the conflicting claims are in a co-pending application, then the rejection is a provisional ODP rejection because the conflicting claims have not in fact been patented.
Co-pending Application No./ U.S. Patent No.
Conflicting Claims
Provisional ODP
(Yes or No)
12,285,432
1-28
No
The analysis employed for an obviousness-type double patenting rejection parallels the analysis for a determination of obviousness under 35 U.S.C. § 103. See MPEP 804; In re Braat, 937 F.2d 589, 19 USPQ 2d 1290 (Fed. Cir. 1991); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985). For this reason, the factual inquires set forth in Graham v. John Deere Co., 383 U.S. 1, USPQ 459 (1966) are employed herein.
The Graham v. Deere inquires are summarized as follows: (A) Determining the scope and contents of the patent claim relative to a claim in the application at issue; (B) Ascertaining the differences between the scope and content of the patent claim as determined in (A) and the claim in the application at issue; (C) Determine the level of ordinary skill in the pertinent art; and, (D) Evaluate any objective indicia of nonobviousness.
(A) Determining the scope and contents of the patent claim relative to a claim in the application at issue – The conflicting claims of the abovementioned U.S. patent are drawn to a process of using a compound of instant formula (I) or pharmaceutical composition thereof.
(B) Ascertaining the differences between the scope and content of the patent claim as determined in (A) and the claim in the application at issue - The conflicting claims of the abovementioned U.S. patent described the compound of instant formula (I) or pharmaceutical composition thereof in a process of treatment-type claims and failed to describe the compound of instant formula (X).
(C) Determine the level of ordinary skill in the pertinent art - the level of ordinary skill in the art may be found by inquiring into: (1) the type of problems encountered in the art; (2) prior art solutions to those problems; (3) the rapidity with which innovations are made; (4) the sophistication of the technology; and (5) 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 those 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 typical education level of active workers in the field of organic chemistry, as well as the high degree of sophistication required to solve problems encountered in the art, the Examiner finds that a person of ordinary skill in the art would have at least a college degree in the field related to medicine, chemistry, and/or the pharmaceutical art and at least four years of work experience, i.e. a masters or doctorate level scientist/clinician.
(D) Evaluate any objective indicia of nonobviousness - none
Conclusion - Although the conflicting claims are not identical, one of ordinary skill in the art would recognize that they are not patentably distinct from each other. As recited above, the compound or pharmaceutical composition thereof depicted in the conflicting claims of abovementioned U.S. patent is the instant product because the Examiner finds that the purification of the abovementioned compound or pharmaceutical composition thereof depicted in the abovementioned U.S. patent to a single enantiomeric R form (e.g. 100% pure product, 0% impurity) having an ee of at least 98% would have been prima facie obvious to the skilled artisan, motivated by the desire to eliminate impurities or byproducts in the compound that would be reasonably expected to adversely affect its overall biological activity, function or stability. As directed by the MPEP at §2144.04(VII), “Pure materials are novel vis-à-vis less pure or impure materials because there is a difference between pure and impure materials. Therefore, the issue is whether claims to a pure material are unobvious over the prior art. In re Bergstrom, 427 F.2d 1394, 166 USPQ 256 (CCPA 1970). The mere purity of a product, by itself, does not render the product unobvious. Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). Factors to be considered in determining whether a purified form of an old product is obvious over the prior art include whether the claimed chemical compound or composition has the same utility as closely related materials in the prior art, and whether the prior art suggests the particular form or structure of the claimed material or suitable methods of obtaining that form or structure. In re Cofer, 354 F.2d 644, 148 USPQ 268 (CCPA 1966)" (emphasis added).
The unpredictable nature of the chemical arts generally allows an assertion of similarity to be rebutted by a sufficient demonstration of nonobviousness that employs secondary considerations of objective indicia. In this case, there are no indicia of nonobviousness shown to provide evidence that compound or pharmaceutical composition thereof of the abovementioned U.S. patent is excluded as the instant product of the instant application. Absent indicia of nonobviousness, the Examiner finds that one of ordinary skill in the art would consider the instant product and that of the conflicting claims of the abovementioned U.S. patent to be equally effective in their objective.
This rejection is in agreement with the judicially created doctrine grounded in public policy 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.
Conclusion
Claims 1-12 are rejected.
Claims 14-23 are withdrawn.
Claim 13 is cancelled.
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.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621
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