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 Claims
The amendments to the claims filed April 4, 2024 are acknowledged and entered. Claims 1-6, 8-11 and 14-17 are pending.
Priority
This application is a 371 of PCT/EP2022/077790, filed October 6, 2022, which claims priority of EPO 21201584.6, filed October 8, 2021.
Information Disclosure Statement
Acknowledgement is made of the Information Disclosure Statement filed on April 4, 2024. All references have been considered except where marked with a strikethrough.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any of the errors of which applicant may become aware of in the specification.
Election/Restriction
Applicant’s election without traverse of Group I (claims 1-6 and 10-11, drawn to a compound wherein the compound is 2-Cyano-N-(4-cyano-3-methyl-phenyl)-3-cyclopropyl-3-hydroxy-thioacrylamide) in the reply filed on June 17, 2026 is acknowledged. Claims 8-9 and 14-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 17, 2026.
Claim Rejections - 35 USC § 112b
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 2-4 and 11 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. The claims are indefinite for the reasons that follow:
Claim 2 recites the limitations "salts" or “solvates” in line 3. There is insufficient antecedent basis for this limitation in the claim because claim 2 depends from claim 1 which does not recite a salt or solvate. Claims 3-4 depend from claim 2 and include the limitations “salts” or “solvates” and therefore are also indefinite.
It is suggested that Applicant amend claim 1 to incorporate lines 3-4 of claim 2 into claim 1 as a way of overcoming the rejections.
Regarding claim 11, the phrase "preferable" at each recitation renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 11 recites the broad recitation “0.1 mg-10g”, and the claim also recites “5 mg-5g” and “10 mg-2g” which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 112d
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-6 and 10-11 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claims 2-4 depend from claim 1 and require a “salt” or “solvate” which is not required by claim 1. Claims 2-4 are therefore broader in scope than claim 1 and thus rejected for failing to further limit the subject matter of the claim upon which they depend. It is suggested that Applicant amend claim 1 to incorporate lines 3-4 of claim 2 into claim 1 as a way of overcoming the rejections of claims 2-4
Claims 5-6, 10 and 11 depend from claim 1 and recite the phrases “wherein the non-alcoholic fatty liver disease is…of the liver” (claim 5); “wherein the non-alcoholic fatty liver disease is… of the liver” (claim 6); “further comprising gamma-Aminobutyric-acid” (claim 10); and “wherein said compound is administered at daily dosages…human body” (claim 11). None of these phrase provide further structural limitation to the invention of claim 1 which is a compound. The phrases thus do not have any patentability weight and the claims are rejected for failing to further limit the subject matter of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-3, 5-6 and 10-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hasse et al. (WO2015/140081 A1)(hereinafter “Hasse”).
The instant claims are drawn to a compound for use in treating non-alcoholic fatty liver disease and related diseases, wherein the compound is 2-Cyano-N-(4-cyano-3-methyl-phenyl)-3-cyclopropyl-3-hydroxy-thioacrylamide. The claims additionally recite the phrases “for use in treating…diseases” (claim 1); “wherein the non-alcoholic fatty liver disease is… of the liver” (claim 6); “further comprising gamma-Aminobutyric-acid” (claim 10); and “wherein said compound is administered at daily dosages…human body” (claim 11) which appear to be intended uses of the claimed compound that do not provide further structural limitation to the invention of claim 1 which is a compound.
Examiner notes that the patentability of a claimed compound depends on the structure of the compound and whether the structure of the claimed compound is novel or nonobvious over the prior art. The additionally recited phrases of the claims noted above (e.g. “for use in treating…diseases”) do not provide any structural limitation to the claimed compound and therefore are not limitations which can distinguish the claimed invention from the prior art.
Regarding claims 1, 5-6 and 10-11, Hasse teaches compound 2-Cyano-N-(4-cyano-3-methyl-phenyl)-3- cyclopropyl-3-hydroxy-thioacrylamide (See page 20, Example 6; also claim 3) which corresponds to the compound of instant claim 1.
Regarding claims 2, Hasse teaches 2-Cyano-N-(4-cyano-3-methyl-phenyl)-3- cyclopropyl-3-hydroxy-thioacrylamide and its tautomeric isoform (claim 3). A person of ordinary skill in the art would easily recognize that prior art compound 2-Cyano-N-(4-cyano-3-methyl-phenyl)-3- cyclopropyl-3-hydroxy-thioacrylamide is the enol tautomer shown in formula (I) and that the enol tautomer is in equilibrium with the tautomeric isoform (i.e. keto form) shown in formula (I). As evidenced by Patrick G (Organic Chemistry, 2nd Ed, 2012, Section J2 Properties) ketones are in rapid equilibrium with an isomeric structure called an enol. The two forms are called tautomers and the process of equilibration is called tautomerism (Figure 4. Keto-enol tautomerism). Because of this tautomerism, the compound of claim 1 also includes the keto form or, alternatively, the equilibrium depicted in formula (I).
Regarding claim 3, Hasse teaches the enol or keto tautomer (page 2, formula (I) or a tautomeric isoform thereof).
Hasse teaches all structural limitations of the claimed invention and therefore anticipates the claims.
“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).” (MPEP 2112). “A claim containing a ‘recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus’ if the prior art apparatus has all the structural limitations of the claim” (MPEP 2114). “(T)he recitation of a new intended use for an old product does not make a claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429 (Fed. Cir. 1997).
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.
Claims 1-2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Hasse et al. (WO2015/140081 A1)(hereinafter “Hasse”).
Hasse teaches compound 2-Cyano-N-(4-cyano-3-methyl-phenyl)-3- cyclopropyl-3-hydroxy-thioacrylamide and the keto tautomer as noted above, the teachings of which are incorporated herein by reference. The keto tautomer corresponds to a racemic mixture of both R and S enantiomers.
Hasse further teaches wherein the compounds of the invention are useful for the treatment of diseases (claim 9; pages 1-2) and that compounds of the invention include compounds that are either pure R or pure S (page 6, compounds may include compounds that are stereomerically pure).
The difference between Hasse and the instant claims is that the instant claims require that the compound is the R or S enantiomer. However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the instant application to isolate either the R or S enantiomer of the claims because Hasse had disclosed that compounds of the invention could be stereomerically pure (i.e. R or S).
One would have been motivated as a matter of practicing the invention of Hasse and obtaining a stereomerically pure compound to treat disease.
One would have had a reasonable expectation of success because Hasse had already disclosed that compounds of the invention could be stereomerically pure which corresponds to either the R or S enantiomer as is claimed.
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 1-3, 5-6 and 10-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 10,472,324 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by the patent claims.
Patents claim 1-3 and 5-7 are drawn to a compound of formula (I) or a tautomeric isoform thereof.
Patent claim 4 recites a composition comprising a compound of claim 1.
Patent claim 8 depends from patent claim 1 and recites wherein the compound is 2-cyano-N-(4-cyano-3-methyl -phenyl)-3-cyclopropyl-3-hydroxy-thioacrylamide which is the compound of instant claim 1.
As noted in the above rejection, 2-cyano-N-(4-cyano-3-methyl -phenyl)-3-cyclopropyl-3-hydroxy-thioacrylamide (the enol form of the compound) includes the keto tautomer.
The patent claims meet all structural limitations of claimed invention and therefore anticipate the claims.
Claims 1-2 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 10,472,324 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are obvious over the patent claims.
The patent claims are drawn to 2-cyano-N-(4-cyano-3-methyl -phenyl)-3-cyclopropyl-3-hydroxy-thioacrylamide, including the keto form, as noted above. Patent claim 9 further recites a method of treating disease.
The difference between the patent claims and instant claim 4 is that the instant claim recites wherein the compound is the R or S enantiomer. However, the R or S enantiomer of the instant claims would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention because one would have recognized that the keto form of the compound consisted of R and S enantiomers that could be separated using conventional methods in the art (e.g. chiral resolution).
One would have been motivated as a matter of assessing disease treatment with enantiomerically pure compounds.
One would have had a reasonable expectation of success because the keto form was racemic and it would have been routine to isolate separate enantiomers to assess their individual activity.
Conclusion
No claim is allowed.
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July 7, 2026
/KEVIN S MARTIN/Examiner, Art Unit 1624
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