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 .
Election/Restrictions
Applicant’s election without traverse of the invention of Group I and the below compound in the reply filed on 08/04/2026 is acknowledged.
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The above compound was searched by Examiner. The search scope was expanded to further read on compounds wherein the ring comprising Q1-Q5 is pyridinyl substituted with one X and R1 is t-butyl optionally substituted by G. Claims 1, 2, 6, 7, 10, 20, 22, and 30-31 read on the elected species and invention, as well as the expanded search.
Claims 4, 25, 27-29, and 32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species and/or invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/04/2026.
Priority
Examiner acknowledges that, according to the Filing receipt received 08/27/2024, that the instant application 18/678,103 filed 05/30/2024 is a continuation of 17/575,175 filed 01/13/2022, which is a divisional of 16/645,286 filed 03/06/2020, which is a 371 of PCT/GB2018/052595 filed 09/13/2018, which claims priority of United Kingdom application 1714745.5 filed 09/13/2017.
Information Disclosure Statement
The Information Disclosure Statements filed on 10/30/2024 (4 IDS documents), 01/14/2025 (1 IDS document), and 02/13/2026 (2 IDS documents) are in compliance with the provisions of 37 CFR 1.97 and have been considered in full, except where lined through. A signed copy of list of references cited from the IDS is included with this Office Action.
References that are lined through in the aforementioned IDS documents were not considered because copies were not provided in the file wrapper. See 37 CFR 1.98(a)(2).
Examiner additionally notes that the following references contained errors in their citations.
IDS filed 02/13/2026 (14 pages): non-patent literature citation 23, publication date should read “April 3, 2024” rather than “April 3, 2026”;
IDS filed 02/13/2026 (14 pages): non-patent literature citation 24, author should read “CHIU et al.” rather than “CHUI et al.”;
IDS filed 01/14/2025: non-patent literature citation 2, title should read “Adrenergic agents” rather than “Adrenerigic agents”
IDS filed 10/30/2024 (13 pages): author name should read “CYPESS et al.” rather than “CYPRESS et al.”.
Claim Objections
Claim 2 is objected to because of the following informalities: "saturated C. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, 6, 7, 10, 20, 22, and 30-31 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 depicts the structure of formula (IA), which contains a ring comprising variables Q1-Q5. However, while the claim recites “the ring comprising Q1 to Q5 represents a 6- membered heteroaryl”, no particular definitions are set forth for variables Q1-Q5 themselves. The scope of the claim is therefore unclear. Claims 2, 22, and 30-31 do not clarify the limitation at issue and are also rejected.
Claim 1 recites “wherein a stereoisomer is present at a purity of at least 80% relative to an opposite stereoisomer”. It is unclear whether “a stereoisomer” with 80% purity refers to a compound with the stereochemistry of formula (IA) or if other stereoisomers can be present at a purity of 80%. Additionally, it is unclear whether “purity” refers to the compound being free of other side products, excess reagents, etc. or optical purity (enantiomeric excess). For purposes of examination “purity” has been interpreted as optical purity, however, clarification is requested. Claims 2, 6, 7, 10, 20, 22, and 30-31 do not clarify the limitation at issue and are also 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.
Claim(s) 1, 2, 6, 7, 10, 20, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jen et al. (US 3952101 A; 1976; IDS filed 10/30/2024, 18 pgs.).
Jen et al. discloses β-adrenergic agonists (Abstract), including the embodiment α-(t-butylaminomethyl)-5-hydroxy-2-pyridinemethanol (col. 6, Example 2; claim 3) which has the structure below as drawn by STN.
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Jen et al. additionally discloses pharmaceutical compositions comprising the disclosed compounds a pharmaceutically acceptable carriers (col. 3, third and fourth paragraphs).
The compound differs from claimed compound (S)-6-(2-(tert-butylamino)-1-hydroxyethyl)pyridin-3-ol in that Jen et al. does not disclose the optical purity of the above compound. However, regardless of the degree of optical purity, a pure optical isomer is not patentable over the racemic mixture unless it possesses properties not possessed by the racemic mixture. In re Anthony, 414 F.2d 1383, 162 U.S.Q.P. 594 (C.C.P.A. 1969). As such, absent unexpected results, it would be prima facie obvious for one of ordinary skill in the art to resolve the compound of Jen et al. to arrive at the enantiomers of the disclosed compound, and to further optimize the optical purity of the compound via routine optimization.
Claim(s) 1, 2, 6, 7, 10, 20, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fisher et al. (EP 0318092 A2; 1989) in view of Patani et al. (Chem Rev; 1996).
Fisher et al. discloses optically pure β-adrenergic agonists of the following core structure (Abstract; p. 3) which is substantially free of the opposite enantiomer (p. 4, first paragraph).
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Fisher et al. additionally discloses the embodiment as below (p. 9).
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Fisher et al. teaches compositions with the disclosed compounds as an active ingredient (p. 2, second paragraph).
The compound of Fisher et al. differs from that of the instant invention wherein X is amino rather than halo, -ORd, etc. This limitation is obvious in view of Patani et al.
Patani et al. teaches that amino (NH2) and hydroxyl (OH) are interchangeable bioisosteres known in the art for development of pharmacological agents (p. 3150, col. 1, par. 3). Patani et al. additionally teaches that amino and hydroxyl can be successfully interchanged due to their similar steric size, spatial arrangement, and ability to act as hydrogen bond acceptors or donors (p. 3150, col. 1, par. 3).
It would be prima facie obvious for one of ordinary skill in the art to substitute the amino group on the compound of Fisher et al. with a hydroxyl. One would have been motivated to do so, with reasonable expectation of success, as amino and hydroxyl groups are known bioisosteric replacements used in developing pharmaceutical compounds. In an effort to produce new β-adrenergic agonists, one would therefore be apprised that substitution of one functional group for the other would yield predictable results.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 6, 7, 10, 20, 22, and 30-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11357757 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the ‘757 patent is directed toward the following compound or a salt thereof.
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Claim 2 is directed toward the compound being present in an enantiomeric excess of at least 90%. Claims 3-4 are directed toward a composition with the compound being present in an enantiomeric excess of at least 90%. Claims 5-6 are directed toward a combination product comprising the compound being present in an enantiomeric excess of at least 90% and another therapeutic agent useful for treating hyperglycemia. Claims 7-8 are directed toward a kit-of-parts comprising a pharmaceutical composition of the compound being present in an enantiomeric excess of at least 90% and another therapeutic agent useful for treating hyperglycemia.
The claims of the ‘757 patent are narrower in scope than, and therefore anticipate, the instantly claimed invention.
Claims 1, 2, 6, 7, 10, and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3, 5, 9, and 12 of copending Application No. 18/693,571 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The claims of the ‘571 application are directed toward a compound of formula I as below.
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Wherein the ring comprising Q1-Q5 can be pyridyl (claim 5) and X1 and X2 can both be hydrogen (claim 9). Claim 12 is directed toward a pharmaceutical composition comprising a compound of formula I. The compound of formula I substantially overlaps in scope with the instant claims wherein R1 represents C4-12 alkyl and alkyl can be cyclic or partially cyclic. The specification of the ‘571 application additionally discloses that the desired stereoisomer can be present at a purity of at least 80% (see p. 21). As such, one of ordinary skill in the art would be apprised that compounds of particular purity are within the scope of the invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 6, 7, 10, 20, 22, and 30-31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 7-8, and 15-16 of copending Application No. 18/717,134 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the ‘134 is directed toward a hemi-tartrate salt of the following compound.
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Claim 4 is directed toward the salt having a purity of at least 90%. Claims 7-8 are directed toward a composition with the salt having a purity of at least 90%. Claim 15 is directed toward a combination product comprising the salt and another therapeutic agent useful for treating hyperglycemia. Claim 16 is directed toward a kit-of-parts comprising a pharmaceutical composition of the salt and another therapeutic agent useful for treating hyperglycemia.
Claims 1, 4, and 7-8 of the ‘134 application are narrower in scope than, and therefore anticipate, the instantly claimed invention. Furthermore, one of ordinary skill in the art would be apprised that the combination product and kit-of-parts as claimed would include embodiments wherein the salt has a purity of at least 90%.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADELINE E BRAUN whose telephone number is (703)756-4533. The examiner can normally be reached M-F 8:30am-5:00pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MADELINE E BRAUN/Examiner, Art Unit 1624 08/26/2026
Prosecution Insights