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 1-4, 6, 8-10, 12, 15-17, 37, 39, 44, 46, 48, 63, and 67 are pending in the instant application.
Claims 1-4, 6, 8-10, 12, 15-17, 37, 39, 44, 46, 48, 63, and 67 are examined herein.
Priority
The instant application claims benefit of priority to U.S. Provisional Application No. 63/337,234, filed on 02 May 2022 and PCT/US2023/066508, filed on 02 May 2023. The claims to the benefit of priority are acknowledged. As such, the effective filing date of the claims is 02 May 2022.
Information Disclosure Statement
The information disclosure statements (IDS), submitted on 01 November 20242, 21 April 2025, and 21 April 2025, are acknowledged and considered. The submissions are in compliance with the provisions of 37 CFR 1.97.
Specification
The disclosure is objected to because of the following informalities:
The compound BRD2889 is structurally undefined. Page 57 line 9 recites, “In some embodiments, the piperlongumine analog or derivative thereof can be (E)-3-((4-methoxyphenyl)ethynyl)-1-(3-(3,4,5-trimethoxyphenyl)acryloyl)piperidin-2-one (BRD2889) (a piperlongumine analog)1 or a pharmaceutically acceptable salt, ester, prodrug thereof. ln some examples, the piperlongumine analog or derivative thereof can have a structure below:
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, or a pharmaceutically acceptable salt, ester, prodrug thereof.” There is nothing that states the above structure is BRD2889.
Appropriate correction is required.
Improper Markush
Claims 1-2, 4, 6, 8-10, 12, 15, 63 and 67 are rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of A, Y1, Y2, Z1, and Z2 are improper because the alternatives defined by the Markush grouping do not share both a single structural similarity, as there is no common core, and a common use, as the specification fails to use a combination of these variables for the use as glutaminase inhibitors.
The possible substitution patterns set forth in claim 1 create a genus of compounds that spans classifications due to the changing core. Without a representative number of structures, expressing the range of variability, disclosed in the specification or shown in the prior art, the instant application does not show all the possible structure subtypes to be functionally equivalent and have a common use. The specification sets forth 33 embodiments. A is defined as a ring which encompasses all cyclic structures, the specification only demonstrates 4 different rings in all 33 embodiments. Of these 3 are nitrogen heterocycles and 1 is cyclopentyl. Y1 and Y2 are incorporated into A, but with the vast possibilities of A the possibility of Y1 and Y2 being N or C adds to the changing core. Z1, and Z2 are defined as heterocyclic, this again presents a vast genus for these substituents and the preferred embodiments only set forth a thiadiazole, pyridazine, pyrazine, and pyridine. All other substitution patterns set forth for these groupings are either not represented in the specification or inadequately represented such that one cannot deem them functionally equivalent.
The current Formula A encompasses substitution patterns that result in different functionality. For example Gong et al. (Communication. 2015;13(7):1979-1982) presents compounds R1 and R3 (pictured below) of the instant genus when A is anthracene, Y1 and Y2 are C, X1 and X2 are CH, Z1 and Z2 are pyridine, Z1 and Z2 are NH, c and d are 1, and R1 and R2 are alkyl. The compounds of Gong are ratiometric probes, , demonstrating that all possible structure substitutions presented in the instant claims do not share a common use. And without a representative number of species one would not assume all the possible structural substitutions to be functionally equivalent.
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Claim 3, is the closest to a proper Markush grouping, as it represents the majority of the preferred embodiments. Possible substituents for A, Y1, Y2, Z1, and Z2 need to reflect the moieties presented in the preferred embodiments.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Claim Rejections - 35 USC § 112
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.
Claims 1-4, 6, 8-10, 12, 15, 17, 37, 39, 44, 46, 48, 63, and 67 are 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 1 is directed to a pharmaceutical composition comprising a glutaminase inhibitor agent and a GSTP1 inhibitor agent. Both a “glutaminase inhibitor agent” and a “GSTP1 inhibitor agent” are functional limitations which require a compound to inhibit the glutaminase enzyme or inhibit the GSPT1 protein, respectively. This term does not describe an art-recognized genus of structurally related compounds and Applicant’s disclosure does not provide sufficient written description to support this functional limitation.
See MPEP 2163 II. A. 3. (a) (ii) with regards to the requirements for descriptive support and for functional limitations of generically described entities:
“The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice (see i)(A) above), reduction to drawings (see i)(B) above), or by disclosure of relevant, identifying characteristics, i.e., structure or other physical and/or chemical properties, by functional characteristics coupled with a known or disclosed correlation between function and structure, or by a combination of such identifying characteristics, sufficient to show the applicant was in possession of the claimed genus (see i)(C) above). See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406”
“A "representative number of species" means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus.”
There is no structure-function relationship for glutaminase (GLS) inhibition or GSPT1 inhibition recognized by the prior art. The art teaches diverse structural features for both glutaminase and GSPT1 inhibitors, demonstrating they do not encompass just one structural genus.
For example Wang et al. (Front Cardiovasc Med. 2022;9:838657) discloses 4 GLS inhibitors of varying structural features, namely Bis-2-(5-Phenylacetamido-1,2,4-Thiadiazol-2-yl)Ethyl Sulfide 3, CB-839 (N-(5-(4-(6-((2-(3-(Trifluoromethoxy)Phenyl)Acetyl)Amino)-3-Pyridazinyl)Butyl)-1,3,4-Thiadiazol-2-yl)-2-Pyridineacetamide), Compound 968 (5-(3-Bromo-4-(Dimethylamino)Phenyl)-2,2-Dimethyl-2,3,5,6-Tetrahydrobenzo[a]Phenanthridin-4(1H)-One), and 6-Diazo-5-Oxo-L-Norleucine. Without explicit naming of the GLS and GSPT1 inhibitors the skilled artisan cannot at once envisage the instant invention. The broad genus recited leaves the claim open to encompasses future inhibitors whose structure is currently unknown; thereby allowing the compounds of which the applicant is not in possession of to be patented.
The specification does not provide an adequate representation of all the possible species of GLS inhibitors or GSPT1 inhibitors. Failure to represent all of the possible species of GLS inhibitors or GSPT1 inhibitors through relationship of structure and function, which would provide an overall depiction of the claimed subject matter, suggests the applicant is not in possession of the claimed invention.
To summarize, there is a lack of descriptive support since the claims recite a functional limitation and: (i) the provided species are not sufficiently representative of the genus of compounds having such function, (ii) multiple other species with the function are known in the art with completely different structural and variable mechanistic features and (iii) there is no general art-recognized structure-function relationship for compounds with the required functional activity.
Claims 2-4, 6, 8-10, 12, and 15-16 are 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 2 recites a compound of Formula A, or a pharmaceutically acceptable salt, prodrug, or derivative thereof. Claim 8 recites the GSPT1 inhibitor agent is a piperlongumine analog or a pharmaceutically acceptable salt, prodrug, or derivative thereof. Claim 9 recites a compound of Formula (I), or a pharmaceutically acceptable salt, ester, or prodrug thereof. The applicant provides no examples of a prodrug, derivative, analog, or ester.
Regarding prodrugs, one of ordinary skill in the art would not be able to determine the scope of a functional prodrug of a compound of Formula A or Formula (I). The specification defines a prodrug’s function but does not depict a structure nor relate a prodrug’s function to its structure. Additionally, the specification states “certain compounds disclosed herein can exist as prodrugs…” (page 39, line 1) but does not discloses which compounds can be and which cannot be prodrugs. Formulation of a prodrug would require the applicant to possess the knowledge of which structural moieties would lead to a functional drug, and which would not. Strickley et al. (Formulation Challenges of Prodrugs. Prodrugs. 2007. Chapter 4.1.2. 383-410) discuss several formulation challenges presented with prodrugs, namely; chemical stability, reactive by-products, solubility, and polymorphism. Experimentation is required to make a successful prodrug. The specification does not provide any structure-function correlation to support the bounds of a functional prodrug of Formula A; nor are any examples presented in the instant specification, which suggests the applicant is not in possession of a prodrug of a compound of Formula A or Formula (I).
Regarding derivatives, one of ordinary skill in the art would not be able to determine the scope of a functional derivatives of compounds of Formula A. The specification defines derivative as “a structurally similar compound that retains sufficient functional attributes of the identified analog.” The bounds of what is and is not a derivative remains unclear with this definition as “sufficient functional attributes” is not quantitatively defined. As the specification does not provide a definite definition of derivative nor does it provide structure-function relationship through a representative number of species, it is implied the applicant does not possess a functional derivative of a compound of Formula (A).
Regarding analogs, again the specification provides a qualitative definition of an analog; “The term "analog" refers to a substance that shares one or more particular structural features, elements, components, or moieties with a reference substance. Typically, an "analog" shows significant structural similarity with the reference substance, for example sharing a core or consensus structure, but also differs in certain discrete ways” (page 37, line 28). The definition does not relate an analog to function and places no bounds on the structural variety an analog can share with the parent compound. As the specification does not provide a definite definition of analog nor does it provide structure-function relationship through a representative number of species, it is implied the applicant does not possess a functional analog of a piperlongumine.
Regarding esters, one of ordinary skill in the art would not be able to determine the scope of functional esters of a compound of Formula (I) based on the specification. The specification does define an ester on page 36 but also states prodrugs can be esters (page 39). Formulation of an ester prodrug would require the applicant to possess the knowledge of which esters would lead to a functional drug and which would not. Lillethorup et al. (RSC Med. Chem.2025;16:1037) details functional issues that arise with ester prodrugs. Due to their structure, ester prodrugs are released by both chemical and enzymatic hydrolysis. This combination of mechanisms can hinder the selectivity of drug release. Additionally, an ester prodrug can be hydrolyzed in the gastrointestinal tract, releasing the active compound before it reaches its target and negating the drug’s efficacy while potentially inducing adverse side effects. Not all ester prodrugs will work; structure-function correlation is necessary to establish the bounds of a functional ester prodrug of a compound of Formula (I). As the specification does not provide any structure-function correlation to support the bounds of a functional ester of a compound of Formula (I), nor are any examples presented in the instant specification, this suggests the applicant is not in possession of a functional ester of a compound of Formula (I) nor in possession of the knowledge of which esters would or would not maintain the function of a compound of Formula (I).
In conclusion, there is no structure-function correlation between what is and what is not a functional prodrug, derivative, analog, or ester in the specification. Without the correlation between structure and function or an adequate representation of species functioning as a prodrug, derivative, analog, or ester, the instant invention fails to comply with the written description requirement.
Claim Rejections - 35 USC § 112
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 2-4, 6, 8-10, 12, and 15-16 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.
Claims 2-4, 6, 8-9, 15, and 16 recites the limitation "or a pharmaceutically acceptable salt, prodrug, or derivative thereof." There is insufficient antecedent basis for this limitation in the claim as claim 1 does not recite this limitation. There is no recitation of a pharmaceutically acceptable salt, prodrug, or derivative of the glutaminase inhibitor or GSTP1 inhibitor in claim 1, rendering the dependent claims indefinite as they expand the limitation without proper antecedent basis. Dependent claims 10 and 12 are also subject to the rejection as they do not remedy the issue.
Claim 9 recites the limitation "or a … ester…thereof." There is insufficient antecedent basis for this limitation in the claim as claim 8 does not contain this limitation. There is no recitation of an ester of a piperlongumine analog in claim 8, rendering the dependent claims indefinite as they expand the limitation without proper antecedent basis. Dependent claims 10 and 12 are also subject to the rejection as they do not remedy the issue.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 6, 8-10, 12, 15, 63, and 67 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chan et al. (WO 2022103706A1) in view of Wang et al. (Front Cardiovasc Med. 2022 Mar;9:838657).
Regarding claim 1, Chan teaches a pharmaceutical composition comprising BRD-K34222889 (also known as BRD2889), a GSPT1 inhibitor, and an additional therapeutic agent effective to treat pulmonary hypertension (claim 18).
Chan does not teach a glutaminase inhibitor as the additional therapeutic agent.
Wang teaches the role of glutaminase (GLS) in pulmonary hypertension and reviews GLS inhibitors, teaching the treatment of pulmonary hypertension in rats using the GLS inhibitor CB-839.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious.
In this case at least prong A and B of KSR applies – combining known compounds for the same purpose of treating pulmonary hypertension, and substitution of one known element for another, respectively. Chan teaches the combination of a GSTP1 inhibitor and an additional therapeutic for the treatment of pulmonary hypertension. It would be prima facie obvious to one of ordinary skill in the art to substitute the additional therapeutic with a GLS inhibitor as Wang demonstrates their utility in the treatment of pulmonary hypertension. Combination therapy is well known in the art, the skilled artisan would be motivated to combine two therapeutics known to treat the same disease with a reasonable expectation of success. The skilled artisan would further be guided by the work of Chan to have one of the compounds be a GSTP1 inhibitor and the work of Wang would motivate the substitution of Chan’s additional therapeutics for a GLS inhibitor.
Thus, all of the elements of claims were known to one of ordinary skill in the art at the time the invention was made and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of invention. Therefore, the claimed invention, as a whole, would have been obvious to one of ordinary skill in that art at the time the invention was made.
Regarding claim 6, Wang teaches the GLS inhibitors CB-839 and C968.
Regarding claim 8, Chan teaches the GSTP1 inhibitor to be a piperlongumine analog (claim 18).
Regarding claim 9, Chan teaches the GSTP1 inhibitor to be of Formula (I) (pictured below), which is the same as the instant Formula (I) (page 31, line 5).
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Regarding claims 10 and 12, Chan teaches A1 is C(O), A2 is -C≡C- , D is -C(R’)=C(R’)-, where R’ and R” are hydrogen in Formula I-A (pictured below) (page 32, line 5).
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Regarding claim 15, Chan teaches the same instant compound, which is BRD-K34222889 or BRD2889 (pictured below) (page 33, line 13).
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Regarding claim 63, Chan teaches a method of treating pulmonary hypertension comprising administering a therapeutically effective amount of a pharmaceutical composition that inhibits glutathione S-transferase P (GSTP1), increases iron-sulfur cluster assembly (ISCU) protein stability, increases ISCU protein expression, or a combination thereof (claim 1). And Wang teaches a compound that inhibits glutaminase.
Regarding claim 67, Chan teaches a method of increasing iron-sulfur cluster assembly protein stability, and ISCU protein expression which would treat diseases associated with iron-sulfur cluster assembly protein instability or deficiency.
Claim(s) 1-4, 6, 8-10, 12, 15-16, 63, and 67 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chan et al. (cited above) in view of Wang et al. (cited above) and in further view of McDermott (US10245254; cited by Applicant on 1449 IDS).
The teachings of Chan and Wang are disclosed above and incorporated by reference herein.
Regarding claim 2, the combination of Chan and Wang does not teach a GLS inhibitor of instant Formula A.
McDermott teaches GLS inhibitors of Formula A (pictured below) (claim 1) which is the same as the instant Formula A.
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In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious.
In this case at least prong B of KSR applies – substitution of one known element for another. It would be prima facie obvious to one of ordinary skill in the art to substitute the GLS inhibitor taught by Wang for the GLS inhibitor taught by McDermott. As they belong to the same drug class the skilled artisan would have a reasonable expectation of success in the GLS inhibitors of Lemieux also treating pulmonary hypertension.
Thus, all of the elements of claims were known to one of ordinary skill in the art at the time the invention was made and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of invention. Therefore, the claimed invention, as a whole, would have been obvious to one of ordinary skill in that art at the time the invention was made.
Regarding claim 3, McDermott teaches the GLS inhibitors of the instant claim in Figures 1A-1R.
Regarding claim 4, McDermott teaches the GLS inhibitor UPGL00064 (pictured below) (Figure 1R).
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Regarding claim 16, Chan teaches BRD2889 and McDermott teaches UPGL00064.
Claim(s) 1-4, 6, 8-10, 12, 15-17, 37, 39, 44, 46, 48, 63, and 67 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chan et al. (cited above) in view of Wang et al. (cited above) and McDermott (cited above) and in further view of Nakamura et al. (J Clin Med. 2017;6(5):48).
The teachings of Chan, Wang, and McDermott are disclosed above and incorporated by reference herein.
Regarding claims 17, 37, 39, 44, 46, 48, 63, and 67, the combination of Chan, Wang and McDermott do not teach the administration of the GLS and GSTP1 inhibitor by a therapeutic particle.
Nakamura teaches nanoparticle drug delivery systems that contain a biocompatible polymer for the treatment of pulmonary hypertension.
It would be prima facie obvious to one of ordinary skill in the art to employ the drug delivery system of Nakamura with the composition taught in the combination of Chan, Wang, and McDermott. Nakamura teaches the advantages of nanoparticle delivery is localized drug delivery, which can minimize adverse effects and increase efficacy. The skilled artisan would be motivated by these teachings and apply the delivery system to the aforementioned combination as reduced side effects and increased efficacy can increase patient compliance. The shared utility of treating pulmonary vascular diseases would further guide the skilled artisan to the combination of prior art.
Conclusion
Claims 1-4, 6, 8-10, 12, 15-17, 37, 39, 44, 46, 48, 63, and 67 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jerica K Wilson whose telephone number is (703)756-4690. The examiner can normally be reached Monday-Friday 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.K.W./Examiner, Art Unit 1621
/CLINTON A BROOKS/Supervisory Patent Examiner, Art Unit 1621
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