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 .
DETAILED ACTION
Priority and Status of Claims
1. This application is a 371 of PCT/US2022/081229 12/09/2022, which claims benefit of the provisional application: 63267513 02/03/2022, and 63265231 12/10/2021.
2. Claims 1-8, 11-12 and 16-25 are pending in the application.
Claim Rejections - 35 USC § 112
3. 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.
Claims 1-8, 11-12 and 16-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C.
112, first paragraph (pre- AIA ), because the specification does not reasonably provide
enablement of the instant “axially chiral cannabinoid analog”, and “O-propargyl vinyl
coumarin” without limitation (i.e., no named compounds). The specification does not
enable any person skilled in the art to which it pertains, or with which it is most nearly
connected, to make the invention commensurate in scope with these claims.
ln In re Wands, 8 USPQ2d 1400 (1988), factors to be considered in determining
whether a disclosure meets the enablement requirement of 35 U.S.C. 112, first
paragraph, have been described. They are:
1. the nature of the invention,
2. the state of the prior art,
3. the predictability or Iack thereof in the art,
4. the amount of direction or guidance present,
5. the presence or absence of working examples,
6. the breadth of the claims,
7. the quantity of experimentation needed, and
8. the level of the skill in the art.
In the instant case:
The nature of the invention
The nature of the invention is a method of use using “axially chiral cannabinoid analog”, and “O-propargyl vinyl coumarin” without limitation (i.e., no named compounds), see claim 1.
The state of the prior art and the predictability or Iack thereof in the art
The state of the prior art is Grenninng et al. WO 2020/180960, it discloses a compound
of the formula in claim 1, see page 117.
The amount of direction or guidance present and the presence or absence
of working examples
The only direction or guidance present in the instant specification is the description of a number of “axially chiral cannabinoid analog”, and “O-propargyl vinyl coumarin” on pages 4-7 of the specification. There is no data present in the instant specification for the “axially chiral cannabinoid analog”, and “O-propargyl vinyl coumarin” without limitation (i.e., no named compound).
The breadth of the claims
The instant breadth of the rejected claims is broader than the disclosure,
specifically, the instant “axially chiral cannabinoid analog”, and “O-propargyl vinyl coumarin” is without limitation (i.e., no named compound).
The quantity or experimentation needed and the Ievel of skill in the art
While the level of the skill in the chemical arts is high, it would require
undue experimentation of one of ordinary skill in the art to resolve any “axially chiral cannabinoid analog”, and “O-propargyl vinyl coumarin” without limitation. There is no guidance or working examples present for constitutional any “axially chiral cannabinoid analog”, and “O-propargyl vinyl coumarin” without limitation for the instant invention. Incorporation of the limitation of “axially chiral’ cannabinoid analog”, and “O-propargyl vinyl coumarin” supported by specification (i.e., claims 2 and 18) into claim 1 would overcome this rejection.
4. 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.
Claims 12, 16 and 18 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 pre-AIA the applicant regards as the invention.
Claims 12, 16 and 18 independently recite the limitation “comprises” is ambiguous and indefinite. A compound or drug product claim cannot use open-ended language when defining the parameters of the gene or compound, see M.P.E.P. 2111.03. Replacement of the limitation “comprises” with a limitation “is” or “has” would overcome this rejection.
5. 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 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.
Claim Rejections - 35 USC § 103
6. The following is a quotation of 35 U.S.C. 103(a) 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1-2 are rejected under 35 U.S.C. 103(a) as being obvious over
Grenning et al. WO 2020/180960.
Applicant claim a method for synthesizing an axially chiral cannabinoid analog, the method comprising:(a) admixing an O-propargyl vinyl coumarin and a catalyst to form a tetracyclic scaffold compound; (b) treating the tetracyclic scaffold compound with a reductant to form the axially chiral cannabinoid analog, and the O-propargyl vinyl coumarin has the structure:
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, see claims 1-2.
Determination of the scope and content of the prior art (MPEP §2141.01)
Grenning et al. ‘960 disclose a method of synthesizing an axially chiral cannabinol analog, the method comprising:
(a) reacting a compound of formula I with a substituted benzene molecule of formula II in the presence of a base and a metal salt to produce a product of formula III:
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596
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wherein X comprises a carbon-carbon or carbon-nitrogen triple bond;
(b) reacting the product of formula III with a compound of formula IV in the presence of a tertiary amine and a Lewis acid to produce a product of formula V:
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394
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(c) performing a Diels-Alder cyclization on the product of formula V to produce a product of formula VI: [AltContent: rect]
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(d) using a dehydration agent to produce a product of formula VII
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, wherein R1 is hydroxyl, see claim 12 on pages 119-121.
Determination of the difference between the prior art and the claims (MPEP §2141.02)
The difference between instant claims and Grenning et al. ‘960 is that the instant claims are embraced within the scope of Grenning et al. ‘960. It is noted that the instant claims are silent on the scope of chemical formulae of “axially chiral cannabinoid analog”, “O-propargyl vinyl coumarin” and reductant in claim 1. Grenning et al. ‘960 discloses a broader scope of making axially chiral cannabinoid analog.
Finding of prima facie obviousness-rational and motivation (MPEP §2142-2143)
One having ordinary skill in the art would find the claims 1-2 prima facie obvious because one would be motivated to employ processes of making of Grenning et al. ‘960 to obtain instant invention.
The motivation to make the claimed processes of making derived from the known processes of making of Grenning et al. ‘960 would possess similar yields to that which is claimed in the reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REI TSANG SHIAO whose telephone number is (571)272-0707. The examiner can normally be reached on 8:30 am-5:00 pm.
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/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1691
June 01, 2026
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