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 .
Claim of Foreign Priority
Applicant did not claimed foreign priority in the Application Data Sheet filed February 8, 2024.
Election/Restrictions
Applicant’s election without traverse of Group I, corresponding to claims 78-92, in the reply filed on July 15, 2026, is acknowledged. Applicant elected compound 8 as the species compound for examination. Applicant notes that claims 78-80 encompass the elected species. As such, claims 78-80 are examined below.
Status of the Claims
Claims 78-93 are pending. Claims 81-93 are withdrawn. Claims 78-80 are examined.
The examiner notes that the elected species, compound 8, is taught by Boloor et al., (WO2015200709). Boloor claims the following compound in prior art claim 26.
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.
Boloor also teaches compound 294, which is shown below as having a nitrile substituted on a claimed core scaffold.
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. STN also teaches the following, which is compound 8.
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While the synthesized compound is known in the prior art, compound 14 is free of the prior art. As such, a prior art rejection is not applied to reject a method that requires the use of a novel reactant. However, it appears that the instant Specification requires specific steps that are omitted in the claimed methods of synthesizing compound 8. As such, a § 112 rejection is set forth below.
The examiner also attaches Wang et al., Chin. J. Org. Chem. 2012, 32, 1643-1652, which represents the state of the art with respect to converting a nitrile to a carboxylic acid.
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.
Claims 78-80 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without identifying the steps that provide for producing the claimed product through a process that yields a solid that is easy to filter and dry, and one that is a soluble intermediate for the synthesis of the lysine salt. See par. 146. These are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). In particular, the hydrolysis of the cyano group was performed to avoid the isolation of the free acid, which is not possible with most common organic solvents. See par. 146. Thus, most common organic solvents are being taught as unusable. This step appears to require EtOH/NaOH (aqueous) 90%. Further, according to paragraph 149 of the Specification, the following steps were required to yield the claimed compound:
The final product (Compound 8a) was generated by reaction of Compound 15a with (L)-lysine under acidic conditions. More specifically, to an appropriately sized reactor was charged Compound 15a (559 g, 1.0 wt.) and L-lysine (540 g, 0.966X wt.). The reactor was then purged with Nn, and water (6.99 L, 12.5X vol.) was added. The resulting mixture was then headed (50 °C) and aged (~1 hr). Methanol (2.52 L, 4.5X vol.) was charged in one portion and the reaction was then aged (10 mins). An aqueous solution of2.12M HCl (671 mL, 1.2X vol.) was then charged (over 45 mins) by addition funnel, the mixture was cooled (40 °C), and Compound 8a seed (16 g, 0.03X wt.) was charged.
Thus, it is far from clear that the above description is properly and sufficiently captured by the “reacting compound 15, or a solvate thereof, with acid to form compound 8.”
As such claims 78-80 are rejected as not providing sufficient specificity in the claims to enable a POSA yield the claimed product. The product that is formed must be sufficient for use in synthesis of the lysine salt.
To overcome this rejection Applicant can add specific steps and components to claims 78-80 that are required to produce claimed products. For example, Steps 8 and 9 are shown below:
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The at a minimum the use of EtOH/NaOH 90% and then MeOH/Water/(L)-Lysine, HCl 90% are required by the claimed.
The examiner notes that [A] claim which omits matter disclosed to be essential to the invention, as described in the specification or in other statements of record, may also be rejected under 35 U.S.C. § 112(a) as not enabling. {See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976); and MPEP § 2164.08(c)}.
As such, no claim is allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JARED D BARSKY whose telephone number is (571)272-2795. The examiner can normally be reached on 9-5 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amy Clark can be reached on 571-272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JARED BARSKY/Primary Examiner, Art Unit 1628
