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
Claims 34-53 are currently pending in the instant application. Applicants have canceled claims 1-33 in an amendment filed on July 31, 2024. Claims 34-47 and 49-51 and claims 48, 52 and 53 are objected in this Office Action.
I. Priority
The instant application is a 371 of PCT/KR2023/002477, filed on February 21, 2023 and claims benefit of Foreign Applications REPUBLIC OF KOREA 10-2022-022320, filed on February 21, 2022; REPUBLIC OF KOREA 10-2022-140639, filed on October 27, 2022; REPUBLIC OF KOREA 10-2022-0146145, filed on November 4, 2022; REPUBLIC OF KOREA 10-2023-0022804, filed on February 21, 2023,.
II. Information Disclosure Statement
The information disclosure statements (IDS) submitted on July 31, 2024, September 30, 2025 and March 31, 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
III. Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 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.
Claims 34-45 are rejected under 35 U.S.C. 112(a) or 112, first paragraph, while being enabling for a method of treating or alleviating inflammasome-mediated disease or alleviating or treating a disease caused by Gram-negative bacterial infection or Gram-negative bacterium does not reasonably provide enablement for a method of preventing inflammasome-mediated disease or preventing a disease caused by Gram-negative bacterial infection or Gram-negative bacterium. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
In 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 lack 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.
The nature of the invention
Applicants are claiming a method of treating or alleviating inflammasome-mediated disease or alleviating or treating a disease caused by Gram-negative bacterial infection or Gram-negative bacterium. Support for the intended use is found in in vitro data for the inhibitory effect on biofilm formation in P. gingivalis; Inhibitory effect of gingipain expression of P. gingivalis; Inhibitory effect on biofilm formation in E. coli, P. aeruginosa and A. baumannii, etc. on pages 41-60 of the specification.
The state of the prior art and the predictability or lack thereof in the art
The state of the prior art is that the pharmacological art involves screening in vitro and in vivo to determine which compounds exhibit the desired pharmacological activities (i.e. what compounds can treat which specific disease by what mechanism). There is no absolute predictability even in view of the seemingly high level of skill in the art. The existence of these obstacles establishes that the contemporary knowledge in the art would prevent one of ordinary skill in the art from accepting any therapeutic regimen on its face.
The instant claimed invention is highly unpredictable as discussed below:
It is noted that the pharmaceutical art is unpredictable, requiring each embodiment to be individually assessed for physiological activity. In re Fisher, 427 F. 2d 833, 166 USPQ 18 (CCPA 1970) indicates that the more unpredictable an area is the more specific enablement is necessary in order to satisfy the statute. In the instant case, the instant claimed invention is highly unpredictable since one skilled in the art would recognize that in regards to therapeutic or prophylactic effects of any condition mediated by NLRP3 inflammasome , whether or not the condition is affected by the instant compounds' activity would make a difference.
For example, Applicants' claim is drawn to a method of preventing Alzheimer’s disease. It is the state of the art that Alzheimer’s disease is a progressive neurologic disorder that causes the brain to atrophy and brain cells to die. Alzheimer’s disease is the most common cause of dementia. Medications may temporarily improve or slow progression of symptoms. These treatments can sometimes help people with Alzheimer’s disease maximize function and maintain independence for a time. There is no treatment that cures Alzheimer’s disease or alters the disease process in the brain. The exact cause of Alzheimer’s aren’t fully understood. Researchers trying to understand the cause of Alzheimer’s are focused on the role of two proteins: Beta-amyloid and Tau proteins. Alzheimer’s disease is not a preventable condition. Evidence suggests that changes in diet, exercise and habits may lower the risk of developing Alzheimer’s disease (see URL https://www.mayoclinic.org/diseases-conditions/alzheimers-disease/symptoms-causes/syc)
Only a total of five drugs developed to improve the symptoms of Alzheimer’s disease have been approved by the FDA. The five drugs function by two different mechanisms> One is cholinesterase inhibition, which delays Alzheimer’s disease by blocking hydrolysis of the critical neurotransmitter acetylcholine. This category of drugs include donepezil (Aricept), rivastigmine (Exelon) and galantamine (Razadyne). The other one is memantine, a non-competitive N-methyl-D-aspartate (NMDA) channel blocker that reduces the activity of the neurotransmitter glutamate, which plays an important role in learning and memory by binding to the NMDA receptor. Namzaric is a combination of donepezil and memantine which reduces the levels of both acetylcholine and glutamate (see Chen, et al. Acta Pharmacologica Sinica 2017:1205-1235).
There is no absolute predictability even in view of the seemingly high level of skill in the art. The existence of these obstacles establishes that the contemporary knowledge in the art would prevent one of ordinary skill in the art from accepting any therapeutic regimen on its face.
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 minimal for preventing any of the diseases embraced by the claimed methods. There are no working examples present for preventing any disease involving gram negative bacteria or any disease mediated by inflammasome.
Test assays and procedure are provided in the specification such as in vitro data for the inhibitory effect on biofilm formation in P. gingivalis; Inhibitory effect of gingipain expression of P. gingivalis; Inhibitory effect on biofilm formation in E. coli, P. aeruginosa and A. baumannii, etc. on pages 41-60.
Receptor activity is generally unpredictable and the data provided is insufficient for one of ordinary skill in the art in order to extrapolate to the other compounds of the claims. It is inconceivable as to how the claimed compounds can treat the extremely difficult diseases embraced by the instant claims.
Applicants have not provided any competent evidence or disclosed tests that are highly predictive for the pharmaceutical use of the instant compounds. Pharmacological activity in general is a very unpredictable area. Note that in cases involving physiological activity such as the instant case, “the scope of enablement obviously varies inversely with the degree of unpredictability of the factors involved.” See In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970).
The breadth of the claims
The breadth of the claims is a method of preventing, treating or alleviating inflammasome-mediated disease or preventing, alleviating or treating a disease caused by Gram-negative bacterial infection or Gram-negative bacterium.
The quantity of experimentation needed and the level of the skill in the art
The quantity of experimentation needed is undue experimentation. One of skill in the art would need to determine what diseases would be benefited by the effects of inhibiting inflammasome or gram negative bacteria and would furthermore then have to determine which of the claimed compounds in the instant invention would provide treatment or prevention of the diseases.
The level of skill in the art is high. However, due to the unpredictability in the pharmaceutical art, it is noted that each embodiment of the invention is required to be individually assessed for physiological activity by in vitro or in vivo screening to determine which compounds exhibit the desired pharmacological activity and which diseases would benefit from this activity.
Genentech Inc. v. Novo Nordisk A/S (CA FC) 42 USPQ2d 1001, states that “a patent is not a hunting license. It is not a reward for search, but compensation for its successful conclusion” and “patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable”.
Therefore, in view of the Wands factors and In re Fisher (CCPA 1970) discussed above, to practice the claimed invention herein, a person of skill in the art would have to engage in undue experimentation to test which diseases can be treated by the compound encompassed in the instant claims, with no assurance of success.
This rejection can be overcome, for example, by amending the claim to read on the subject matter that Applicants' specification are enabled for as indicated above.
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 34-35, 37-39, 41-42, 44-47 and 49-51 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR20170141133A. The instant invention claims
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The KR20170141133A reference teaches isoindoline derivatives such as
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160
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(See Table 1, page 39, compound 18) wherein ring A is phenyl; R3 is C4 alkyl; R2 and R1 are both Br. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claim 51 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Krishnamurti, et al. (Chem. Commun. 2018, 54, 10574-10577). The instant invention claims
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The Krishnamurti, et al. reference teaches isoindoline derivatives such as
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120
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(See Table 1, page 10574, compound 2a) wherein ring A is phenyl; R3 is Me; one of R1 and R2 is -CF3 and the other is phenyl. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claim 51 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Freccero, et al. (J. Org. Chem. 1993, 58, 1740-1745). The instant invention claims
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The Freccero, et al. reference teaches isoindoline derivatives such as
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143
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(See scheme I, page 1740, compound 15) wherein ring A is phenyl substituted with two -CN; R3 is Me; both R1 and R2 are phenyl. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
Claim 51 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Warzecha, et al. (Acta Cryst. (2005), E61, o1074-01075). The instant invention claims
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The Warzecha, et al. reference teaches bicyclic het derivatives such as
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360
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(See scheme I, page 1740, compound 15) wherein ring A is phenyl; R3 is Me; one of R1 is H and the other is phenyl substituted with a methoxy. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
IV. Objections
Dependent Claim Objections
Dependent Claims 48, 52 and 53 are objected to as being dependent upon a rejected based claim. To overcome this objection, Applicant should rewrite said claims in an independent form and include the limitations of the base claim and any intervening claim.
V. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shawquia Jackson whose telephone number is 571-272-9043. The examiner can normally be reached on 7:00 AM-3:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Adam Milligan can be reached on 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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/SHAWQUIA JACKSON/Primary Examiner, Art Unit 1626
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