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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Applications 63/157,682, 63/184,691, and 17/687,568, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. In particular, Applications ‘682, ‘691, and ‘568 do not disclose crystalline psilocin hydrobromide. Accordingly, claims 22-29 are not entitled to the benefit of Applications ‘682 and ‘691.
The disclosure of prior-filed Application No. 17/883,509 is sufficient to comply with the requirements of 35 U.S.C. 112(a). Accordingly, the priority date of instant claims 22-29 is the filing date of Application ‘509, 8 August 2022.
Claim Rejections - 35 USC § 112(b)
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 22 and 27 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 22 refers to Figure 41A and, as such, is not complete in itself and could be practically defined using X-ray powder diffraction signal angles (see MPEP 2173.05(s)).
Claim 27 recites a method of treating depression, comprising administering to a crystalline form of psilocin hydrobromide salt. It is unclear what is being administered and what the subject of the administration is, rendering the claim indefinite.
For examination purposes, claim 27 is interpreted as “a method of treating depression, comprising administering to a subject a crystalline form of psilocin hydrobromide salt.”
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.
Claims 21-29 are rejected under 35 U.S.C. 103 as being unpatentable over Nivorozhkin et al. (WO 2022/195011 effectively filed 18 March 2021).
Claim 21 is drawn to a crystalline form of psilocin hydrobromide salt.
Nivorozhkin et al. teach pharmaceutically acceptable salts of psilocin compounds (Abstract) including crystal forms of psilocin benzenesulfonate (Example 2 on pgs. 103-105), psilocin tartrate (Example 3 on pgs. 106-108), psilocin hemi-fumarate (Example 4 on pgs. 109-111), psilocin acetate (Example 5 on pgs. 111-112), psilocin malonate (Example 7 on pg. 113), psilocin fumarate (Example 8 on pgs. 113-114), psilocin succinate (Example 9 on pgs. 114-115), psilocin oxalate (Example 10 on pg. 115), psilocin benzoate (Example 11 on pg. 116), and psilocin salicylate (Example 12 on pgs. 118-119), indicating a number of acids are suitable for forming pharmaceutically acceptable crystalline salts of psilocin. Nivorozhkin et al. further teach hydrobromic acid as a suitable acid for forming a pharmaceutically acceptable psilocin salt (Pg. 41 last paragraph).
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the crystalline form of psilocin taught by Nivorozhkin et al. to be a psilocin hydrobromide salt. It would have been obvious to substitute one acid taught to be suitable for forming a pharmaceutically acceptable salt of psilocin for another to obtain the predictable result of a pharmaceutically acceptable psilocin salt, with a reasonable expectation of success.
As such, claim 21 is rejected as prima facie obvious.
Claim 22 is drawn to the crystalline form of claim 21, having an X-ray powder diffraction pattern as depicted in Fig. 41A.
Nivorozhkin et al. do not teach the X-ray powder diffraction powder of psilocin hydrobromide.
Nivorozhkin et al. further teach psilocin salts with high crystallinity being preferred due to stability and well-defined physical properties (Pg. 42 last paragraph) and different solvents leading to different crystallinity results (Example 12 on pgs. 118-119), suggesting that the solvent choice could be optimized to provide a crystalline form having the desired physical properties and level of crystallinity. Nivorozhkin et al. additionally teach the use of various solvents, including butanone (Pg. 56).
As discussed by MPEP 2144.05, “[g]enerally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical” (see also In re Aller (220 F.2d 454)): “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation…” Indeed, as further discussed by the court, “[s]uch experimentation is no more than the application of the expected skill of the [ordinarily skilled artisan] and failure to perform such experiments would, in our opinion, show a want of the expected skill”; see also In re Peterson, 315 F.3d at 1325 (Fed. Cir. 2005): “[t]he normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages” and “[o]nly if the ‘results of optimizing a variable’ are ‘unexpectedly good’ can a patent be obtained for the claimed critical range” (quoting In re Antonie (559 F.2d 618 (CCPA 1977))).
In the instant case, the solvent choice is clearly a result-effective variable, determining the crystallinity. Accordingly, it would have been customary for an artisan of ordinary skill in the art to determine the optimal solvent in order to best achieve the desired results.
And, as discussed in MPEP 2112.01(II), "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
In the instant case, as evidenced by Nivorozhkin et al., the X-ray powder diffraction pattern is a property inherent to crystal form, further disclosing that the crystal form is inherent to the solvent used in crystallization of the salt (see e.g., Example 12 on pgs. 118-119 and Fig. 60).
The instant specification discloses that the instantly claimed crystalline form of psilocin hydrobromide was obtained utilizing methyl ethyl ketone (Par. 168) a.k.a., butanone. As Nivorozhkin et al. renders the crystallization of psilocin hydrobromide in methyl ethyl ketone prima facie obvious, the instantly claimed X-ray powder diffraction pattern is necessarily present.
As such, claim 22 is rejected as prima facie obvious.
Claim 23 is drawn to the crystalline form of claim 21, having an endothermic event at about 145.6°C, as measured by differential scanning calorimetry from ambient temperature to 300°C at a rate of 10°C per minute.
Nivorozhkin et al. do not teach the differential scanning calorimetry results for crystalline psilocin hydrobromide.
However, as discussed in MPEP 2112.01(II), "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
In the instant case, it is evidenced by Nivorozhkin et al. that the differential scanning calorimetry profile, including endothermic events, is a property inherent to the crystalline form of the psilocin salt (see e.g., Figs. 33 and 35 for DSC patterns of two different polymorphs of psilocin acetate).
As Nivorozhkin et al. teaches the instantly claimed crystalline form of psilocin hydrobromide made from methyl ethyl ketone, the instantly claimed endothermic event at 145.6°C is necessarily present.
As such, claim 23 is rejected as prima facie obvious.
Claim 24 is drawn to a pharmaceutical composition comprising the crystalline form of claim 21 and at least one agent that provides enhanced stability.
Claim 25 is drawn to the pharmaceutical composition of claim 24, wherein the agent that provides enhanced stability is an antioxidant.
Nivorozhkin et al. further teaches pharmaceutical compositions comprising the crystalline psilocin salts and an excipient such as an antioxidant (Pg. 61 second and third paragraphs).
As such, claims 24-25 are rejected as prima facie obvious.
Claim 26 is drawn to a method of treating anxiety, comprising administering to a subject a crystalline form of psilocin hydrobromide salt.
Claim 27 is drawn to a method of treating depression, comprising administering to a subject a crystalline form of psilocin hydrobromide salt.
Claim 28 is drawn to a method of treating anxiety, comprising administering to a subject the pharmaceutical composition of claim 24.
Claim 29 is drawn to a method of treating depression, comprising administering to a subject the pharmaceutical composition of claim 24.
Nivorozhkin et al. further teach the psilocin compositions as being appropriate for treating mental health disorders including depression and anxiety (Pg. 92-93 bridging paragraph).
As such, claims 26-29 are rejected as prima facie obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Paul Hoerner whose telephone number is (571)270-0259. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm eastern.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/PAUL HOERNER/Examiner, Art Unit 1611
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