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 .1
Status of Claims
Claims 34-57 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/08/2024 (total of 2) and 05/05/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Interpretation
The relative term “substantially” referring to purified forms, occurs in claims 55 and 57. However, the claims reciting “substantially” are adequately defined and described by the specification, where it notes at least with substantially purified forms, “refers to a product having greater than 96% chemical purity, especially greater than 97%, greater than 98%, greater than 99% or 100% chemical purity and/or greater than 97% ee, especially greater than 98% or greater than 99% ee and more especially 100% ee.” See page 8 line 23 to page 9, line 1.
Claim Rejections - 35 USC § 112 (Written Description)
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.
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.
Claim 56 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 56 is broadly directed to a method of making a crystalline form of a compound of formula I
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comprising the steps of:
providing a mixture comprising one or more compounds of formula (II):
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R2 is hydrogen, -C1-10alkyl, -C2-10alkenyl, -C2-10alkynyl, cycloalkyl or aryl;
wherein each alkyl, alkenyl, alkynyl, cycloalkyl or aryl group is optionally substituted;;
forming a 5,20-acetonide of formula III
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de-esterifying the esters at C12 and C13 of formula III to provide a compound of formula I by treating the compound of formula III with a base; and
crystallizing the compound of formula I.
The specification does not teach or disclose the full scope of a compound of formula II to demonstrate that the inventors had possession of the clamed method.
Per MPEP 2163, 2163.01, 2163.02, 35 U.S.C. 112(a) and the first paragraph of pre-AIA 35 U.S.C. 112 require that the "specification shall contain a written description of the invention .... " This requirement is separate and distinct from the enablement requirement. 2
Further, the written description requirement promotes the progress of the useful arts by ensuring that patentees adequately describe their inventions in their patent specifications in exchange for the right to exclude others from practicing the invention for the duration of the patent's term.
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention.3
An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention.4 An application specification may show actual reduction to practice by describing testing of the claimed invention.
In the present case, the important factors leading to a conclusion of inadequate written description is the absence of any working example of the invention as claimed, and the lack of predictability in the art.
In the instant specification, there is no disclosure of compounds having the following claimed substituents:
where Claim 56 broadly claims R is hydrogen and where R is -C(O)-R1, R1 is broadly claimed as C2-C20alkynyl, cycloalkyl, aryl, C1-10alkylcycloalkyl; C2-10alkenylcycloalkyl, C2-10alkynylcycloalkyl, etc.
The instant specification (pages 1 and 4) teaches compounds of formula II, i.e. compounds 1 and 2 where R is -C(OR)1 and R1 is C1-C20 alkyl and C2-C20alkenyl, of compounds 1 and 2 of the specification, along with compounds 1-24 at the Table on pages 16-17.
Compound 1 is tigilanol tiglate (as identified at page 1 of the specification, Background of the Invention) and taught by WO2007070985, see below.
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,
where R is -C(O)R1, where R1 is an alkenyl and alkyl as claimed, at equivalent carbon 12 (C12) and carbon 13 (C13).
Compound 2 is (as identified at page 1 of the specification, Background of the Invention) and taught by Table 1 of WO2014169356 as follows:
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where R is -C(O)R1, where R1 is alkyl, at equivalent carbon 12 (C12) and carbon 13 (C13). See also page 4, lines 11-14 noting substantially pure forms of compounds 1 and 2 of formula II.
See also the Table of the specification on pages 16-17, disclosing compounds 1-24 where substitutions at C12 and C13 are C(O)-R1 and R1 is merely alkyl and alkenyl, at equivalent C12 and C13 carbons.
In contrast to the balance of compounds 1-24 of the Table, claim 56 broadly claims R is hydrogen and where R1 is claimed as C2-C20alkynyl, cycloalkyl, aryl, C1-10alkylcycloalkyl; C2-10alkenylcycloalkyl, C2-10alkynylcycloalkyl, etc., where compounds 1 and 2 of the specification only allow for R1 to be alkyl and alkenyl.
Further, while the method/process of claim 56 claims a compound of formula II where R is hydrogen, this claimed compound of formula II is not supported by the method of claim 56, because step iii) of the process claim requires a de-esterifying of esters at C12 and C13 of formula II, where R is H.
In other word, the specification does not describe a “de-esterification” process by which hydroxyl groups at C12 and C13 carbons are de-esterified. It is unknown how hydroxyls can be de-esterified as the specification provides no description of such.
Therefore, the compounds described in the instant specification detail only a limited number of the total substituents claimed (as per compounds 1 and 2, found with compounds 1-24 of the Table at pages 16-17 of the specification). All working examples presented in the instant specification are related to the compounds containing a fraction of the total claimed substituents.
There are no working examples in the instant specification for the wide range of substituents claimed. Thus the instant specification does not provide any evidence that Applicant was in possession of the claimed invention prior to the effective filing of the instant application. 5
It is noted that the pharmaceutical art is unpredictable, requiring each embodiment to be individually assessed for physiological activity. For inventions in emerging and unpredictable technologies, or for inventions characterized by factors not reasonably predictable which are known to one of ordinary skill in the art, more evidence is required to show possession. For example, disclosure of only a method of making the invention and the function may not be sufficient to support a product claim other than a product-by-process claim. See, e.g., Fiers v. Revel, 984 F.2d at 1169, 25 USPQ2d at 1605; Amgen, 927 F.2d at 1206, 18 USPQ2d at 1021.
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.
Claims 57 is rejected under 35 U.S.C. 102(a)(1) as anticipated by WO 2007070985 A1 (WO 985) (cited on Applicant’s IDS dated 11/08/2024).
Claim 57 is directed to a substantially pure form of 12-tigloyl-13-(2-methylbutanoyl)-6, 7-epoxy-4,5,9, 12, 13,20-hexahydroxy-1-tigliaen-3-one, aka EBI-46 or tigilanol tiglate. Applicant refers to it as compound 1 in its specification. See page 1, lines 15-17.
WO 985 anticipates this compound. See page 10 as reproduced below.
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WO 985 teaches substantially pure isomeric forms of its compounds, such as greater than 90% ee, about 95% or 97% ee or greater than 99% ee. See page 16, lines 3-8.
Claim 57 is rejected under 35 U.S.C. 102(a)(1) as anticipated by WO2014169356A1, WO 356, (cited on Applicant’s IDS dated 11/08/2024).
Claim 57 is directed to a substantially form of 12,13-dihexanoyl-6,7-epoxy-4,5,9, 12, 13,20-hexahydroxy1-tigliaen-3-one, referenced by Applicant as compound 2 in their filed specification. See page 1, lines 18-20
WO 356 anticipates this compound at claim 28 as compound 42, reproduced below.
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See also WO 356, where Compound 42 is disclosed in Table 1 as follows:
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WO 356 teaches substantially pure isomeric forms of its compounds, such as greater than 90% ee, about 95% or 97% ee or greater than 99% ee. See page 6, lines 15-19.
Allowable Subject Matter
Claims 34-55 are allowed. While amorphous forms of a compound of formula II are known in the art, see accompanying STN and SciFinder search results, methanol solvents, and crystalline forms including those with the claimed XRPD patterns are free of the prior art.
Conclusion and Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM LEE whose telephone number is (571)270-3876. The examiner can normally be reached M-F.
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, Adam C. Milligan can be reached at (571) 270-7674. 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.
/WILLIAM Y LEE/Examiner, Art Unit 1623
/GEORGE W KOSTURKO/Primary Examiner, Art Unit 1621
1 CONTINUING DATA
This application is a 371 of PCT/AU2022/051546 12/21/2022
FOREIGN APPLICATIONS
AUSTRALIA 2021904153 12/21/2021
2 This requirement is separate and distinct from the enablement requirement. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340, 94 USPQ2d 1161, 1167 (Fed. Cir. 2010) (en bane); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111,1114 (Fed. Cir. 1991); see also Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920-23, 69 USPQ2d 1886, 1890-93 (Fed. Cir. 2004) (discussing the history and purpose of the written description requirement); In re Curtis, 354 F.3d 1347, 1357, 69 USPQ2d 1274, 1282 (Fed. Cir. 2004) ("conclusive evidence of a claim's enablement is not equally conclusive of that claim's satisfactory written description"). The written description requirement has several policy objectives. "[T]he 'essential goal' of the description of the invention requirement is to clearly convey the information that an applicant has invented the subject matter which is claimed." In re Barker, 559 F.2d 588, 592 n.4, 194 USPQ 470, 473 n.4 (CCPA 1977). Another objective is to convey to the public what the applicant claims as the invention. See Regents of the Univ. of Cal. v. Eli Lilly, 119 F.3d 1559, 1566, 43 USPQ2d 1398, 1404 (Fed. Cir. 1997), cert, denied, 523 U.S. 1089 (1998). "The 'written description' requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor's obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee was in possession of the invention that is claimed." Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1084 (Fed. Cir. 2005).
3 See, e.g., Moba, B. V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F .2d at 1563, 19 USPQ2d at 1116.
4 Lockwood v. Amer. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997). Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was "ready for patenting" such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the applicant was in possession of the claimed invention. See, e.g., Pfaff v. Wells Bees., Inc., 525 U.S. 55, 68, 119 S.Ct. 304,312, 48 USPQ2d 1641, 1647 (1998); Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406; Amgen, Inc. v. Chugai Pharm.,927 F.2d 1200, 1206, 18 USPQ2d 1016, 1021 (Fed. Cir. 1991).
5 Vas-Cath Inc. Mahurkar, 19 USPQ2d 1111, makes clear the "applicant must convey with
reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention. The invention is, for purposes of the 'written description' inquiry,
whatever is now claimed." (See page 1117.) The specification does not "clearly allow persons of
ordinary skill in the art to recognize that [he or she] invented what is claimed." (See Vas-Cath at
page 1116).
Finally, University of California v. Eli Lilly and Co., 43 USPQ2d 1398, 1404, 1405 held that:
... To fulfill the written description requirement, a patent specification must describe an invention
and do so in sufficient detail that one skilled in the art can clearly conclude that "the inventor
invented the claimed invention." Lockwood v. American Airlines, Inc., 107 F. 3d 1565, 1572, 41
USPQ2d 1961, 1966(1997); In re Gosteli, 872 F.2d 1008, 1012,10 USPQ2d 1614, 1618 (Fed Cir.
1989) ("[T]he description must clearly allow persons of ordinary skill in the art to recognize that
[the inventor] invented what is claimed.") Thus, an applicant complies with the written description
requirement "by describing the invention, with all its claimed limitations, not that which makes
it obvious," and by using "such descriptive means as words, structures, figures,
diagrams, formulas, etc., that set forth the claimed invention." Lockwood, 107 F.3d at 1572,
41 USPQ2d at 1966.
Prosecution Insights