CTNF 18/754,996 CTNF 82617 DETAILED ACTION Notice of Pre-AIA or AIA Status This Office action details a first action on the merits for the above referenced application No. Claims 1-11, 50, 64-65 and 75-83 are pending in this application. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Information Disclosure Statement 06-52 The information disclosure statement (IDS) submitted on 06/26/2024, 03/14/2025 and 05/08/2026 was noted and the submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Drawings 06-37 AIA The drawings were received on 06/26/2024 . These drawings are acknowledged . Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-15 AIA Claim (s) 65 and 75, 81-83 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Bouvet et al. (EJNMMI Research . Bouvet et al. disclose that in the first reaction (R1), cyclotron produced no-carrier added [¹⁸F]fluoride was captured from [¹⁸O]H ₂ O target solution onto a chromafix cartridge. A solution containing Bu ₄ NHCO ₃ and MeCN was used to elute n.c.a [¹⁸F]fluoride from the resin into a reactor. The aqueous [¹⁸F]fluoride was dried azeotropically. In the second reaction R2 involved combining n.c.a [¹⁸F]fluoride with precursor 9 (instant formula 3) to form compound 10 via nucleophilic heteroaromatic substitution reaction. Radiofluorination was carried out with 5 mg of precursor 9 in anhydrous MeCN at 60°C for 10 min. The final reaction step (R3) included removal of the tert-butyl ester protecting groups in compound 10 via acidic cleavage using 1.5 mL of HCI in 1 mL of MeCN at 40°C for 5 min to give crude [¹⁸F]DCFPyL.. .' The total synthesis time was 55 min, including HPLC purification. The overall isolated radiochemical yield of [¹⁸F]DCFPyL was 23+5% (see page. 7, col. 2 and Fig 2). Radiotracer [¹⁸F]DCFPyL was injected into PSMA-LNCap and PSMA-PC3 tumor-bearing nude mice and high radioactivity uptake and retention was observed in tumor (Fig 7). Regarding claims 65 and 75, Bouvet et al. disclose [¹⁸F]DCFPyL as represented by PNG media_image1.png 257 328 media_image1.png Greyscale (see pg. 9). Claim 65 is a product by process claim. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the [18F]DCFPyL disclosed by Bouvet et al. is structural identical to the [18F]DCFPyL disclosed in the instant specification . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-21-aia AIA Claim (s) 65 and 75-83 are rejected under 35 U.S.C. 103 as being unpatentable over Bouvet et al. (EJNMMI Research; published 4 May 2016; see attached 892), in view of Purohit et al. (US 2017/0355669) . Bouvet et al. teach as discussed above. Bouvet et al. do not further teach a kit comprising a DCFPyL precursor and phosphoric acid ,tetrabutylammonium hydrogen carbonate and cryptan. Purohit discloses compositions comprising an imaging agent, systems, kits, salts, and precursors useful in medical imaging (abstract). In some embodiments, the conditions suitable for deprotection comprise exposing the compound to an acid or to an acidic environment. The acid is hydrochloric acid, formic acid, or phosphoric acid (0043). In some embodiments, the suitable conditions further comprise exposing a compound to a source of fluoride in the presence of an ammonium salt or a bicarbonate salt. In some embodiments, the ammonium salt or bicarbonate salt comprises the formula: R 4 NHCO3, wherein R 4 is alkyl (0049). In some embodiments, the fluorination occurs in the presence of K 2 CO 3 and Kryptofix® 222 (or any another cryptand having affinity for the cation of interest, including for example potassium, near that of Kryptofix® 222) in MeCN (acetonitrile) alone or in combination with t-BuOH, as the solvent (0188). It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify the method of Bouvet et al. by forming a kit comprising DCFPyL labeling precursor and reagents such as tetrabutylammonium hydrogen carbonate and phosphoric acid as taught by Purohit. It would have been obvious to one of ordinary skill in the art to make these modifications because phosphoric acid advantageously enable mild deprotection in the presence of other acid sensitive functionalities and/or provide an equivalent deprotecting acid that is known to deprotect t-butyl esters. Purohit teaches that in the absence of a cryptand, and optionally in the presence of another reagent (e.g., ammonium and/or bicarbonate salt) may increase the yield and/or purity of the reaction, (0227) and reasonably would have expected success because the imaging agent precursor and the fluoride species and/or may aid in stabilizing the resultant imaging agent . Double Patenting 08-30 AIA A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co. , 151 U.S. 186 (1894); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert , 245 F.2d 467, 114 USPQ 330 (CCPA 1957). A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101. 08-31 AIA Claim s 1, 2-11, 50, 64 and 65 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim s 1, 2-11, 27, 33 and 34 of prior U.S. Patent No. 11,851,407 . This is a statutory double patenting rejection. 08-33 AIA The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. 08-36 AIA Claim s 1-11, 50, 64-65 and 75-83 rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20, 27, 33 and 34 of U.S. Patent No. 11,851,407 and over claims 1-12, 16, 18, 22 and 24 of U.S. Patent No. 10,947,197 in view of Berkman et al WO 2013/173583 . Claims 1-20, 27, 33 and 34 of U.S. Patent No. 11,851,407 and claims 1-12, 16, 18, 22 and 24 of U.S. Patent No. 10,947,197, claim method of synthesizing 2-(3-{1-carboxy-5-[(6-[ 18 F]fluoro-pyridine-3-carbonyl)-amino]-pentyl}-ureido)-pentanedioic acid [ 18 F]DCFPyL), PNG media_image2.png 280 447 media_image2.png Greyscale the method comprising: (i) radiofluorinating a DCFPyL precursor comprising ester moiety protecting groups to form a radiofluorinated DCPFPyL precursor; (ii) deprotecting the ester moiety protecting groups of the radiofluorinated DCPFPyL precursor of step (i) with phosphoric acid to form [ 18 F]DCFPyL in a reaction mixture; and (iii) purifying the [ 18 F]DCFPyL from the reaction mixture of step (ii) to provide [ 18 F]DCFPyL, and kits and methods of imaging comprising the administration of an effective amount of the claimed compounds. The only difference between the instant claims and the patents recited claims is the [ 18 F]DCFPyL produced of claim 1, has a specific activity of at least 40 Ci/µmol. Berkman discloses methods for preparing diagnostic compounds (PSMA inhibitors) comprising contacting a compound with a fluoride or radiofluoride source. In certain embodiments, a kit can be provided that contains from about 1 to about 30 mCi of the radionuclide-labeled imaging agent described above, in combination with a pharmaceutically acceptable carrier. The imaging agent and carrier may be provided in solution or in lyophilized form. When the imaging agent and carrier of the kit are in lyophilized form, the kit may optionally contain a sterile and physiologically acceptable reconstitution medium such as water, saline, buffered saline, and the like (abstract and 0163-0164). It would have been obvious to one of ordinary skill in the art at the time the invention was made to produce [ 18 F]DCFPyL having a specific activity of at least 40 Ci/µmol as taught by Berkman. The person of ordinary skill in the art would have been motivated to make those modifications, because diagnostic compounds and methods for PSMA presenting cells, such as prostate cancer, that capitalize on the potency and specific affinity of small- molecule inhibitors (0006) and reasonably would have expected success because the diagnostic agents can be used to monitor and stratify patients for treatment with appropriate therapeutic agents. Conclusion No claims are allowed at this time. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAGADISHWAR RAO SAMALA whose telephone number is (571)272-9927. The examiner can normally be reached Monday-Friday 9am-6pm. 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, Hartley G Michael can be reached at 571 272 0616. 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. /J.R.S/Examiner, Art Unit 1618 /Michael G. Hartley/Supervisory Patent Examiner, Art Unit 1618 Application/Control Number: 18/754,996 Page 2 Art Unit: 1618 Application/Control Number: 18/754,996 Page 3 Art Unit: 1618 Application/Control Number: 18/754,996 Page 4 Art Unit: 1618 Application/Control Number: 18/754,996 Page 5 Art Unit: 1618 Application/Control Number: 18/754,996 Page 6 Art Unit: 1618 Application/Control Number: 18/754,996 Page 7 Art Unit: 1618 Application/Control Number: 18/754,996 Page 8 Art Unit: 1618 Application/Control Number: 18/754,996 Page 9 Art Unit: 1618 Application/Control Number: 18/754,996 Page 10 Art Unit: 1618
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