DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicant’s election without traverse of Group I, and species of
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, in the reply filed on June 4, 2026 is acknowledged.
3. Examination followed guidelines provided by MPEP 803.02. The elected species appeared novel and nonobvious over the prior art. Therefore, the search and examination was extended. Prior art was found that makes obvious non-elected species. Therefore, the claims were rejected and claims to nonelected species were withdrawn from further consideration. The claims were searched to the extent of the elected species and the nonelected species shown below.
4. Claims 5-10 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter. Election was made without traverse in the reply filed on June 4, 2026.
Priority
5. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
6. The information disclosure statements (dated June 4, 2026 and APRIL 15, 2024) were in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The statements were considered. Signed copies of form 1449 are enclosed herewith.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(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.
7. Claims 1-4 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for compounds or the pharmaceutically acceptable salt, solvate, complex thereof, does not reasonably provide enablement for the prodrug thereof. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claims.
The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Mineral Separation v. Hyde, 242 ITS, 261,270 (1918) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? That standard is still the one to be applied, in re Wands, 858 F.2d 731, 737, 8USPQ2s 1400, 1404 (Fed. Cir. 1988). MPEP 2184.01(a) states “There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is undue.” The factors are applied below to the instant claims.
The breadth of the claims and nature of invention
The claims are drawn to compounds of Formula (I) or a pharmaceutically acceptable salt, solvate, non-covalent bonded composite, a complex, and a prodrug thereof.
The state of the prior art, level of ordinary skill, level of predictability, amount of guidance provided
The state of the art and present specification provide guidance on how to make and use pharmaceutically acceptable salts, solvate, and complex of a compound of formula 1. However, neither the specification nor the state of the art provide specific guidance on how to predict and design prodrugs of the claimed compounds including what structural modifications result in these prodrugs.
Furthermore, the state of the art for designing prodrugs is unpredictable and challenging because structural modifications do not have a predictable effect on properties such as absorption, distribution, metabolism excretion or toxicity (ADMET).
“On the basis of this analysis, we discuss strengths and limitations of current prodrug approaches and suggest areas for future development.” Abstract
“As these modifications are likely to affect the physicochemical properties of the prodrug differently, we further investigated whether the distribution of the promoieties would differ depending on the purpose of the prodrug.” Fralish page 369, 1st column, second paragraph
“Release can be further impacted by the mode of administration; for example, through release by gastric enzymes or microbes in oral delivery....” Fralish, page 373, columns 1-2
“Granted, the prodrug approach adds considerable complexity to the molecular design and requires additional safety evaluations for not only the prodrug and the API, but all degradation products. Consequently, prodrug design has historically focused on overcoming ADMET issues...” Fralish, page 379, 1st column
Serendipity has a significant role in the design and careful optimization must be conducted to address each individual drug separately, vs. generic known structural modifications that yield predictable results.
“More recently, although there has been an immense gain in knowledge and a push for the rational design of more complex prodrugs, serendipity still often has a significant role during prodrug design.” Fralish, page 371, Box 1
“Conversely, small-molecule prodrugs are often easy to synthesize, purify, distribute and administer but can be more difficult to design because multi-objective optimization of synthesizability and ADMET properties is required for each project.” Fralish page 366, 1st column, second paragraph
The quantity of experimentation needed to make or use the invention
In the absence of working examples/direction, enablement rests on the existence of an art recognized predictable correlation. Evidence suggests that this requirement is not met for the present case. The amount of experimentation is undue. The experimentation required is to test all structural modifications of the claimed compounds and optimize the modifications relative to parameters such as ADMET in order to determine which modifications result in prodrugs of the claimed compounds. Furthermore, these tests will have to indicate that the modifications produce a prodrug of each of the claimed compounds. It is therefore determined that the present disclosure does not enable one of ordinary skill to practice the scope of the claimed invention.
Claim Rejections - 35 USC § 112
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.
8. Claims 1-4 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 refer to a non-covalent bonded composite of a compound of formula 1. However, the specification does not provide a definition for “non-covalent bonded composite.” Moreover, a definition is not provided in the state of the art. The state of the art defines “non-covalent interactions” as “the sharing of electrons that involves more dispersed variations of electromagnetic interactions between molecules of within a molecule...non-covalent interactions may occur between different parts of the same molecule (e.g. during protein folding) or between different molecules and therefore are discussed also as intermolecular forces.” See reference of “non-covalent interaction – Wikipedia.” Therefore, there are not structural metes and bounds that can be ascertained. Appropriate correction and/or clarification are required.
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.
9. Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 112279862 as applied to claims 1 and 2 above, and further in view of Yu et al.
Determining the scope and contents of the prior art
CN 112279862 near-infrared porphyrin compounds for photodynamic therapy and biological imaging. The reference teaches that
“photodynamic therapy is to inject a non-toxic photosensitizer into the body. After the photosensitizer reaches the lesion through the blood circulation, it selectively gathers at the lesion, and then selects a light source matching the excitation wavelength of the photosensitizer to irradiate the lesion location to excite the photosensitizer, thereby releasing reactive oxygen species, killing diseased cells...” (see machine translation of CN 112279862). The reference teaches various specific preferred embodiments of the porphyrin compounds which include, for example,
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Yu et al. teaches porphyrin based metal organic framework compounds in photodynamic therapy. The reference suggests the use of metal-organic frameworks for versatility, high porosity and biocompatibility. “Porphyrin-MOF nanomaterials have attracted the attention of researchers because MOFs can effectively suppress the quenching caused by the self-aggregation of porphyrin compounds and promote drug delivery.” Yu et al., abstract. Platinum and manganese are specifically suggested.
Ascertaining the differences between the prior art and the claims at issue
The difference between the porphyrin above and the present claims is the presence of a metal cation.
Resolving the level of ordinary skill in the pertinent art - considering objective evidence present in the application indicating obviousness
One of ordinary skill in the art has the teaching and suggestion in the reference to prepare the claimed compounds that have a metal porphyrin. The motivation is to produce a product that will have benefits in terms of drug delivery, solubility, etc. The skilled artisan has a reasonable expectation of success in preparing the claimed products. For this reason, the present claims are found to be prima facie obvious over the prior art.
Conclusion
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/SUN JAE YOO/Primary Examiner, Art Unit 1621
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