DETAILED ACTION
Status of Claims
The amendment submitted July 9, 2026 has been entered.
Claims 1-2 and 5-14 are pending and under consideration.
Claims 1-2 and 5-6 are amended by Applicant.
Claims 3-4 are cancelled by Applicant.
Claims 11-14 are new.
Claims 2 and 5-10 are withdrawn in the instant office action as explained below in the
Claims 1, and 11-14 are under consideration in the instant office action as explained below in the Election/Restriction section
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 Group I, claim 1, drawn to a composition comprising an ifenprofil salt and chronic cough as a species of disease in the reply filed on July 9, 2026 is acknowledged.
New claims 11-14 depends on claim 1 and are drawn to a composition comprising an ifenprofil salt; therefore, are included in Group I and are also elected.
Claims 2, and 5-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 February 10, 2026.
Claims 1 and 11-14 are under consideration and the subject of this Office Action.
Information Disclosure Statement
Two information disclosure statements (IDS) submitted on December 3, 2024 and July 20, 2026 are acknowledged. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
Abstract Objections
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the abstract is less than 30 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Langer et al. (USPN 5,023,266 A), Wick et al. (USPN 4,690,931 A), and Yasui et al. (USPN 4,377,691 A) in view of Avenet, P., Léonardon, J., Besnard, F., Graham, D., Frost, J., Depoortere, H., Langer, S.Z. and Scatton, B., 1996. Antagonist properties of the stereoisomers of ifenprodil at NR1A/NR2A and NR1A/NR2B subtypes of the NMDA receptor expressed in Xenopus oocytes. European journal of pharmacology, 296(2), pp.209-213 and further in view of Bastin, R.J., Bowker, M.J. and Slater, B.J., 2000. Salt selection and optimisation procedures for pharmaceutical new chemical entities. Organic Process Research & Development, 4(5), pp.427-435 and Hossain Mithu, Md Sadeque, Sophia Economidou, Vivek Trivedi, Saumil Bhatt, and Dennis Douroumis. "Advanced methodologies for pharmaceutical salt synthesis." Crystal Growth & Design 21, no. 2 (2021): 1358-1374.
Regarding claims 1 and 11-14, Langer teaches ifenprodil and its analogues are useful for treatment of psychoses (abstract).
More specifically, Langer teaches hydrochloride and benzoate salts of ifenprodil (column 2, table (I) as shown below).
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241
312
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Greyscale
Regarding claims 1 and 11-14, Wick teach ifenprodil analogues of general formula (column 1, lines 12-24).
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124
287
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Wick specifically teaches “Pharmaceutically-acceptable acid addition salts of the compounds of general formula (I), e.g. methanesulphonates, mandelates, fumarates, maleates, malonates, citrates, hydrochlorides, hydrobromides and hydroiodides, may be obtained by known methods, for example by treatment of the compound of general formula I with the appropriate acid in a solvent medium, e.g. an alkanol or ether, or mixtures thereof.”
Wick does not teach the specific salts as per claims 1 and 11-14.
Regarding claims 1 and 11-14, Yasui teaches preparations for ifenprodil and acid-addition salts thereof (abstract).
Yasui specifically teaches that “The free ifenprodil thus obtained may be reacted with an acid in a proper solvent to prepare an acid-addition salt with the acid,” and specifically Example 60 to access ifenprofil tartrate.
Yasui does not teach the specific salts as per claims 1 and 11-14.
As per MPEP 2144.09.I: A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963).”
Additionally, as per MPEP 2144.09, III: “Prior art structures do not have to be true homologs or isomers to render structurally similar compounds prima facie obvious. In re Payne, 606 F.2d 303, 203 USPQ 245 (CCPA 1979).”
The only difference between the prior art and instant invention is the specific acid-addition salts claimed. It is common practice in the field of medicinal chemistry to perform salt screening procedures as part of routine optimization in drug design and scale-up.
Avenet teaches inhibitory effects of ifenprodil and its stereoisomers on NR1A/NR2A and NR1A/NR2B subtypes of the NMDA receptor expressed in Xenopus oocytes (abstract).
Avenet further teaches ifenprodil tartrate and ifenprodil benzoate (page 211, column 1, paragraph 2, and column 2 paragraph 1), and more specifically that “no differences was observed in preliminary experiments between the effects of erythro-ifenprodil tartrate and erythro-ifenprodil benzoate, indicating no effect of the accompanying ion.”
Consequently, Avenet teaches that no unexpected results were observed based on changing the accompanying ion. Avenet does not specifically teach the identical salts as per claims 1 and 11-14.
It is noteworthy that this result is likewise supported by Applicant’s specification which do not demonstrate any unexpected results based on varying the counterion (by example only see page 30, Table 2 and page 37, Table 5).
Bastin teaches that “Selection of an appropriate salt form for a new chemical entity provides the pharmaceutical chemist and formulation scientist with the opportunity to modify the characteristics of the potential drug substance and to permit the development of dosage forms with good bioavailability, stability, manufacturability, and patient compliance.”
Bastin further teaches common pharmaceutical salts including the counterions as per claims 1 and 11-14 such as oleate, pamoate, and fumarate (Table 1).
Hossain Mithu teaches that “Pharmaceutical salt formation is the most preferred and effective method to enhance the physicochemical properties of an active pharmaceutical ingredient (API) such as solubility, bioavailability, stability, and processability (abstract.”
Hossain Mithu further teaches commonly used counterions in salt formation including the acidic counterions as per claims 1 and 11-14 (Table 1).
Hossain Mithu further teaches that “In most cases, hydrochloride salts have been commonly employed to develop salts of weakly basic drug substances. However, the use of hydrochloride salts had to be restricted due to the unacceptability of high acidity in formulations, the risk of corrosion, and poor stability of the acid labile and hygroscopic drugs.”
Consequently, Hossain teaches the challenges and undesirability of hydrochloride salts.
Hossain further teaches “In recent years, modern drug discovery and drug development tools have been employed to reduce the cost in this highly competitive environment. High throughput experimental salt screening became an integral part of the preformulating stages of drug development to narrow down the potential salt forming candidates.”
Consequently, Hossain teaches that high throughput screening can be used to accelerate identifying suitable salts in preparing pharmaceutical formulations.
Therefore, it would have been prima facie obvious before the effective filing date of the claim invention to have modified Langer, Wick and Yasui’s inventions based on the teachings of Avenet, Bastin and Hossain Mithu because Langer, Wick and Yasui teaches ifenprodil and its analogues including hydrochloride and benzoate salts, Wick teaches that other pharmaceutically-acceptable acid addition salts such as fumarate can be achieved, Avenet teaches no unexpected effects based on changing the counterion, and Bastin and Hossain Mithu both teach salts are commonly used in pharmaceutical industry, and specifically that the counterions as instantly claimed are commonly and frequently used, and also that such a salt screening process can be achieved via high-throughput experimentation as part of routine optimization in process chemistry and that hydrochloride salts are undesirable.
Therefore, a person of ordinary skill in the art of medicinal chemistry would have been motivated to modify Langer, Wick and Yasui’s invention as Avenet teaches no unexpected results based on modifying the counterion, Bastin and Hossain Mithu teach high-throughput screening and optimization of salts is routine optimization as part of scale-up and pharmaceutical development and additionally, hydrochloride salts are undesirable; therefore, it would be beneficial to discover alternative salts.
Consequently, a person of ordinary skill in the art would have arrived at the ifenprodil salts as claim in claims 1 and 11-14 as a predictable result with a reasonable expectation of success based on the beneficial teachings of Langer, Wick, Yasui, Avenet, Bastin and Hossain Mithu.
Therefore, claims 1, and 11-14 are rejected on grounds of obviousness.
Conclusion
Claims 1 and 11-14 are under consideration and are rejected. No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAROLYN L. LADD whose telephone number is (703)756-5313. The examiner can normally be reached M-Th, 7:00 am to 5:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James H. Alstrum-Acevedo can be reached at 571-272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.L.L./Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622
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