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 .
Status of the Claims
Claims 1-8 and 11-17 are pending in the instant application. Acknowledgment is made of Applicant’s amendments filed Dec. 26, 2024 and cancelation of claims 9-10.
Priority
This application claims foreign priority to GB2117828.0, filed Dec. 09, 2021, and is a 371 of PCT/EP2022/085133, filed Dec. 09, 2022.
Information Disclosure Statement
Applicant should note that the extremely large number of references in the attached IDS have been considered by the examiner in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search. See MPEP 609.05(b). Applicant is requested to point out any particular references in the IDS which they believe may be of particular relevance to the instant claimed invention in response to this office action.
Claim Objections
Claims 4-5, 8, and 15-16 are objected to because of the following informalities:
Claim 4 is objected to because the limitation “preferably greater than about 95%, more preferably greater than about 99%” should read “preferably greater than about 95%, and more preferably greater than about 99%”.
Claim 5 is objected to because the limitations “213 ∞C”, “212 ∞C”, and “211 ∞C” should read “213°C”, “212°C”, and “211°C” respectively.
Claim 8 is objected to because the limitation “even more preferably at least 98%, most preferably at least 99%” should read “even more preferably at least 98%, and most preferably at least 99%”.
Claims 15 and 16 are objected to because the limitation “one or more other therapeutic agent that is useful” should read “one or more other therapeutic agents that are useful”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
112(b)
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 2-3 and 17 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.
Claim 2 recites the limitation "the tartrate". There is insufficient antecedent basis for this limitation in the claim, as claim 1 recites a hemi-tartrate salt. It is unclear whether the “tartrate” in claim 2 refers to the hemi-tartrate salt of claim 1 or if it is referring to another type of tartrate. Claim 3, which depends on claim 2 and also recites “the tartrate”, is similarly rejected.
Regarding claim 17, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). The phrase “such as wherein the solvent of the solution is ethanol or an ethanol-water mixture” makes it unclear whether the solvent is limited only to ethanol or an ethanol-water mixture or whether this is merely a preferred embodiment.
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.
Claims 1, 4, 6-8, and 11-17 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/053427 A1 (herein Pelcman, cited in the IDS filed Oct. 02, 2024).
Pelcman teaches compounds of formula (I), depicted below, and pharmaceutically acceptable salts thereof (claim 1):
PNG
media_image1.png
355
564
media_image1.png
Greyscale
In a specific embodiment, Pelcman teaches the below compound of formula (I) (p. 71, Example 17):
PNG
media_image2.png
167
238
media_image2.png
Greyscale
This is the same compound as instant formula I, herein referred to as Compound A for clarity.
Pelcman teaches that the salt can be tartrate (p. 8, line 7), and that salts may be formed by conventional means, for example by reaction of a free acid or a free base form of a compound of the invention with one or more equivalents of an appropriate acid or base (p. 7, lines 32-35).
Pelcman also teaches compounds of formula (I) for use in medicine (claim 21), pharmaceutical compositions of compounds of formula (I), compounds of formula (I) for use in the treatment of hyperglycaemia or a disorder characterized by hyperglycaemia (claim 23), a combination product comprising a compound of formula (I) and one or more therapeutic agents useful in the treatment of hyperglycaemia (claim 30), and a kit-of-parts comprising a pharmaceutical composition comprising a compound of formula (I) and one or more therapeutic agents useful in the treatment of hyperglycaemia (claim 31). In particular, Pelcman teaches wherein the disorder characterized by hyperglycaemia is selected from the group consisting of Rabson-Mendenhall syndrome, Donohue’s syndrome (leprechaunism), Type A and Type B syndromes of insulin resistance, the HAIR-AN (hyperandrogenism, insulin resistance, and acanthosis nigricans) syndromes, pseudoacromegaly, and lipodystrophy (claim 29).
Finally, Pelcman teaches compounds of their disclosure may be purified using conventional techniques as known to those skilled in the art (p. 42, lines 31-35), and that stereoisomers (i.e. enantiomers) may be isolated by a racemic other mixture of compounds or by synthesizing from appropriate optically active starting materials (p. 9, lines 17-20).
Regarding claim 1, it would have been prima facie obvious before the filing of the instant invention to make a hemi-tartrate salt of Compound A. One would have been motivated and had a reasonable expectation of success to do so since Pelcman teaches Compound A as a compound of their formula (I) or salts thereof and teaches tartrate as a particular salt.
Regarding claim 4, MPEP 2144.04.VII states: “Purer forms of known products may be patentable, but the mere purity of a product, by itself, does not render the product nonobvious. Factors to be considered in determining whether a purified form of an old product is obvious over the prior art include whether the claimed chemical compound or composition has the same utility as closely related materials in the prior art, and whether the prior art suggests the particular form or structure of the claimed material or suitable methods of obtaining that form or structure” (emphasis added).
In the instant case, the pure form of the tartrate salt of Compound A would be expected to have the same utility as a less pure form. Furthermore, the prior art suggests purification of Compound A. Thus, it would have been prima facie obvious to obtain a hemi-tartrate salt of Compound A of the instantly claimed purity level.
Regarding claim 6, it would have been prima facie obvious before the filing of the instant invention to make a hemi-tartrate salt of Compound A for use in medicine since Pelcman teaches compounds of their formula (I), including compound A, and salts thereof for use in medicine. Furthermore, the recitation “for use in medicine” is intended use and does not lend patentable weight to the claim. See MPEP 2111.02: “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”.
Regarding claim 7, it would have been prima facie obvious before the filing of the instant invention to make a pharmaceutical composition of a hemi-tartrate salt of Compound A. One would have been motivated and had a reasonable expectation of success to do so since Pelcman teaches a pharmaceutical composition comprising a compound of their formula (I) or pharmaceutically acceptable salts thereof. Regarding claim 8, it would have been obvious to make said composition wherein the Compound A has an enantiomeric excess of at least 90% since the prior art teaches methods for obtaining enantiomerically pure forms of Compound A and because there is an expectation that an enantiomerically pure form would have similar properties to a mixture of stereoisomers. See MPEP 2144.09. Regarding claim 12, it would have been obvious to make said composition for use in the treatment of hyperglycaemia because Pelcman teaches compounds including Compound A and salts thereof are useful for the treatment of hyperglycaemia.
Regarding claims 11, 13 and 14, it would have been prima facie obvious before the filing of the instant invention to administer a therapeutically effective amount of a hemi-tartrate salt of Compound A to treat hyperglycaemia or a disorder characterized by hyperglycaemia, since Pelcman teaches compounds including Compound A and salts thereof can be administered to treat hyperglycaemia or a disorder characterized by hyperglycaemia. Similarly, it would have been obvious to treat wherein the patient displays severe insulin resistance (as in claim 13) or disorders characterised by hyperglycaemia selected from Type 2 diabetes, Rabson-Mendenhall syndrome, Donohue's syndrome (leprechaunism), Type A and Type B syndromes of insulin resistance, the HAIR-AN (hyperandrogenism, insulin resistance, and acanthosis nigricans) syndromes, pseudoacromegaly, or lipodystrophy (as in claim 14), since Pelcman teaches compounds including Compound A are useful against these same disorders.
Regarding claim 15, it would have been prima facie obvious before the filing of the instant invention to make a combination product comprising a hemi-tartrate salt of Compound A and one or more other therapeutic agents useful in the treatment of hyperglycaemia. One would have been motivated and had a reasonable expectation of success to do so since Pelcman teaches combination product comprising a compound of formula (I) or a salt thereof and one or more therapeutic agents useful in the treatment of hyperglycaemia and since Pelcman teaches Compound A as a compound of formula (I) and teaches tartrate salts thereof.
Regarding claim 16, it would have been prima facie obvious before the filing of the instant invention to make a kit-of-parts comprising a pharmaceutical composition of a hemi-tartrate salt of Compound A and one or more other therapeutic agents useful in the treatment of hyperglycaemia . One would have been motivated and had a reasonable expectation of success to do so since Pelcman teaches a kit-of-parts comprising a pharmaceutical composition comprising a compound of formula (I) or a salt thereof and one or more therapeutic agents useful in the treatment of hyperglycaemia and since Pelcman teaches Compound A as a compound of formula (I) and teaches tartrate salts thereof.
Regarding claim 17, it would have been prima facie obvious to prepare the tartrate salt of Compound A by reacting Compound A with tartaric acid or a solution of tartaric acid, since Pelcman teaches a tartrate salt of compounds of formula (I) including Compound A and teaches that salts may be formed by reaction of a free acid or a free base form of a compound of the invention with one or more equivalents of an appropriate acid or base.
Taken all together, all this would result in the invention of claims 1-4, 6-8, and 11-17 with a reasonable expectation of success.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Pelcman as applied to claims 1, 4, 6-8, and 11-17 above, and further in view of USDA (Technical Evaluation Report: Tartaric Acid), as evidenced by CAS Registry No. 87-69-4.
As discussed above, Pelcman teaches a tartrate salt of Compound A. Pelcman does not teach wherein the tartrate comprises or essentially consists of (2R,3R)-tartrate.
USDA teaches that tartaric acid exists in three distinct isomeric forms: L(+), D(-) and mesotartaric. L(+) is the form found naturally in grapes and often produced synthetically, whereas D(-) is less common in nature and has almost no practical uses (p. 1, lines 24-29). Furthermore, the L(+) form is generally recognized as safe by the FDA (p. 3, lines 104-106).
As evidenced by CAS Registry No. 87-69-4, L-(+) tartaric acid is another name for (2R,3R)-tartaric acid.
Regarding claims 2-3, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. See MPEP 2144.09: "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 also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious); Aventis Pharma Deutschland v. Lupin Ltd., 499 F.3d 1293, 84 USPQ2d 1197 (Fed. Cir. 2007) (5(S) stereoisomer of ramipril obvious over prior art mixture of stereoisomers of ramipril.). Although the prior art does not specify the stereochemistry of the tartrate in the salt, it would have been obvious before the filing of the instant invention to make a tartrate salt of Compound A wherein the tartrate comprises (as in claim 2) or essentially consists of (as in claim 3) (2R,3R)-tartrate because Pelcman teaches salts of Compound A, including tartrate salts, are useful in the treatment of hyperglycaemia and there is an expectation that a salt containing the (2R,3R)-tartrate stereoisomer would have similar properties. Furthermore, one of ordinary skill in the art would recognize that the (2R,3R) is the most common isomer and is generally recognized as safe, whereas the D-(-) isomer has no practical uses, further motivating the use of the (2R,3R)-tartrate stereoisomer in the salt form of Compound A.
Conclusion
Claims 1-4, 6-8, and 11-17 are rejected.
Claims 4, 5, 8, and 15-16 are objected to.
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLIVER D. HEES whose telephone number is (571)272-9840. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, AMY L. CLARK can be reached at (571) 272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/O.D.H./ Examiner, Art Unit 1628
/AMY L CLARK/ Supervisory Patent Examiner, Art Unit 1628
Prosecution Insights