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 .
Priority
This Application is a national stage entry of PCT/IB2023/055117. This application also claims foreign priority to IN202221028894.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
A review of the file wrapper indicates a foreign language priority document. The conditions of 35 U.S.C. § 119(a)-(d) or (f) are met.
The effective filing date is 05/19/2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/19/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities: the formulas IV, III, and II are of poor resolution. Appropriate correction is required.
Drawings
The drawings are objected to because figures 1-6 have poor resolution.
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 1-7, and 9-11 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 9 recites the limitation “wherein the crystalline (R)-ruxolitinib phosphate, the compound I-A, obtained in the step (c) has”. It is unclear what the subject is that “has” a content of one of the compounds of claim 9. First, it is confusing having two different names and a descriptor of the same compound (examiner believes the subject of the sentence is “compound I-A”). Second, It is not physically possible for a compound to have a content of a different compound. Because the metes and bounds of the claim are unclear, claim 9 is indefinite.
Similarly, claim 10 is rejected for the same rationale above. Also, claim 10 lacks a verb.
Claim 11 recites the limitation "the compound XIV" in the second line of the claim. Claim 11 depends on claim 6, and claim 6 does not recite “a compound XIV". There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation “the chiral salt of ruxolitinib”; however, no where earlier in the claim is “chiral salt ruxolitinib”. There is insufficient antecedent basis for this limitation in the claim.
Similarly, claims 2-7, and 9-11 are rejected for the same rationale above.
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.
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.
Claim(s) 1-3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over SUN (WO 2016035014) in view of ROBERTS (John D. Roberts and Marjorie Caserio, “23.13: Protection of Amino Groups in Synthesis”, LibreTexts, July 31, 2021).
Sun teaches a process for the preparation of ruxolitinib phosphate (instant formula 1-A and referred to as Formula I in ref. claim 3)
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by (1st) deprotecting a compound of ref. formula II
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where Pg is a protecting group, (2nd) treating the compound for formula III
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with (+)-2,3-dibenzolyl-D-tartaric acid (which is a chiral acid of instant step b of claim 1 and claim 2) to obtain the compound of formula IV, and (3rd) converting the compound of formula IV
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to ruxolitinib phosphate of formula I (pages 1-24 and ref claim 3).
SUN also teaches that purifying compounds by crystallization (pages 24 and 25). This helps teach step c of claim 1.
While Sun teaches conversion of ruxolitinib to a salt and preparation of the phosphate form, Sun does not teach the instant “Tri” group. Sun does not teach a preparation process of compound IV.
Roberts teaches it may be difficult to ensure selective chemical reaction at one functional group when other functional groups are present in the same molecule and that nitrogen atoms are particularly susceptible to reactions (page 1).
Roberts teaches that triphenylmethyl is a protecting group for amines and is well known to introduce onto an amine nitrogen (23.13.2:alkylation). Roberts further teaches that the triphenylmethyl group can be removed from the amine nitrogen under very mild conditions, either by catalytic hydrogenation or by hydrolysis in the presence of a weak acid 23.13.2:alkylation). This helps teach step a of claim 1.
Roberts also does not teach a preparation process of compound IV.
The artisan would have been motivated to use a well-known method of protecting an amine, especially because it is known that nitrogen atoms are particularly susceptible to reactions (Roberts page 1). The artisan would expect that replacing the instant Tri group for Sun’s Pg would still result in being able to be removed by a weak acid and that Sun’s reaction would be functional. This teaches claim 1 and 7 (compound IV).
Claim 3 is a product-by-process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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). See MPEP 2113(I). This teaches claim 3.
Conclusion
No claims are allowed as written.
Submitting unexpected results about how this process of making the instant compound 1-A would help expediate prosecution.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GILLIAN A HUTTER whose telephone number is (571)272-6323. The examiner can normally be reached M-F 7:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/G.A.H./ Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
