5723

PCT/US201 0/022277 12.04.2010

PATENT COOPERATION TREATY

From the INTERNATIONAL SEARCHING AUTHORITY

To: CHARLES E. LYON - PCT CHOATE, HALL & STEWART LLP TWO INTERNATIONAL PLACE BOSTON, MA 02110 WRITTEN OPINION OF THE

INTERNATIONAL SEARCHING AUTHORITY

(PCT Rule 43bis.l)

Date of mailing _12 APR ZOlU (day/month/year)

Applicant's or agent's file reference FOR FURTHER ACTION

2005700-0032 See paragraph 2 below

International application No. International filing date (day/month/year) Priority date (day/month/year)

PCT/US 10/22277 27 January 2010 (27 .01.201 0) 28 January 2009 (28.01.2009)

International Patent Classification (IPC) or both national classification and IPC I PC(8) - C07K 14/62, A61 K 38/28 {201 0.01) USPC- 514/3; 530/303 Applicant SMARTCELLS, INC.

I. This opinion contains indications relating to the following items:

Box No. I Basis of the opinion

Box No. II Priority

IZI D ~ D ~

Box No. lll Non-establishment of opinion with regard to novelty, inventive step and industrial applicability

Box No. IV Lack of unity of invention

Box No. V Reasoned statement under Rule 43bis.l (a)(i) with regard to novelty, inventive step or industrial applicability; citations and explanations supporting such statement

D D D

Box No. VI Certain documents cited

Box No. VII Certain defects in the international application

Box No. VIII Certain observations on the international application

2. FURTHER ACTION

If a demand for international preliminary examination is made, this opinion will be considered to be a written opinion of the International Preliminary Examining Authority ("!PEA") except that this does not apply where the applicant chooses an Authority other than this one to be the IPEA and the chosen I PEA has notified the International Bureau under Rule 66.1 bis(b) that written opinions of this International Searching Authority will not be so considered.

If this opinion is, as provided above, considered to be a written opinion of the IPEA, the applicant is invited to submit to the IPEA a written reply together, where appropriate, with amendments, before the expiration of3 months from the date of mailing of Form PCT/ISA/220 or before the expiration of22 months from the priority date, whichever expires later.

For further options, see Form PCT/ISA/220.

3. For further details, see notes to Form PCTIISA/220.

Name and mailing address of the I SAlUS Date of completion of this opinion Mail Stop PCT, Attn: ISAIUS Commissioner for Patents 18 M h 201 0 ( 1 8 03 201 0) P.O. Box 1450, Alexandria, Virginia 22313-1450 arc · · Facsimile No. 571-273-3201

Form PCT/ISA/237 (cover sheet) (July 2009)

Authorized officer:

Lee W. Young

PCT Helpdesk: 571·272·4300 PCT OSP: 571·272·7774

PCT/US201 0/022277 12.04.2010

Box No. I

WRITTEN OPINION OF THE INTERNATIONAL SEARCHING AUTHORITY

Basis of this opinion

International application No. PCT/US 10/22277

I. With regard to the language, this opinion has been established on the basis of:

2. D

the international application in the language in which it was filed.

a translation of the international application into which is the language of a translation furnished for the purposes of international search (Rules 12.3(a) and 23.1 (b)).

This opinion has been established taking into account the rectification of an obvious mistake authorized by or notified to this Authority under Rule 91 (Rule 43bis.l(a))

3. With regard to any nucleotide and/or amino acid sequence disclosed in the international application. this opinion has been established on the basis of a sequence listing tiled or furnished:

a. (means)

D D

b. (time)

D D D

on paper

in electronic form

in the international application as filed

together with the international application in electronic form

subsequently to this Authority for the purposes of search

4. 0 In addition, in the case that more than one version or copy of a sequence listing has been filed or furnished, the required statements that the information in the subsequent or additional copies is identical to that in the application as filed or docs not go beyond the application as filed, as appropriate, were furnished.

5. Additional comments:

Form PCT/ISA/237 (Box No. I) (July 2009)


PCT/US201 0/022277 12.04.2010

International application No. PCT/US 10/22277

Box No. Ill Non-establishment of opinion with regard to novelty, inventive step and industrial applicability

The questions whether the claimed invention appears to be novel, to involve an inventive step (to be non obvious), or to be industrially applicable have not been examined in respect of:

0 the entire international application.

IZJ claims Nos. -=2'-'7--4"'-4'-a=n.:.:d=-8=--6=---'-1"'"68=----------------------------------

because:

0 · the said international application. or the said claims Nos.--::-:---:c:-----------subject matter which does not require an international search (specify):

relate to the following

IZJ the description, claims or drawings (indicate particular elements below) or said claims Nos. 27-44 and 86-168 are so unclear that no meaningti1l opinion could be fonned (specifY):

Claims 27-44 and 86-168 are dependent claims and are not drafted in accordance with the second and third sentences of Rule 6.4(a).

D the claims, or said claims Nos. -:--::--:---:--:---:-:-c:---::---:--:-----:-:-------by the description that no meaningful opinion could be formed (specify):

are so inadequately supported

IZJ no international search report has been established for said claims Nos. _2_7_-44_a_n_d_86_-_1_6_8 ___________ _

0 a meaningful opinion could not be formed without the sequence listing; the applicant did not. within the prescribed time limit:

0 furnish a sequence listing on paper complying with the standard provided for in Annex C of the Administrative Instructions, and such listing was not available to the International Searching Authority in a form and manner acceptable to it.

0 furnish a sequence listing in electronic fonn complying with the standard provided for in Annex C of the Administrative lnstmctions, and such listing was not available to the International Searching Authority in a fonn and manner acceptable to it.

0 pay the required late furnishing fcc for the furnishing of a sequence listing in response to an invitation under Rule 13ter.l(a) or (b).

0 See Supplemental Box for further details.

Form PCTIISA/237 (Box No. Ill) (July 2009)


PCT/US201 0/022277 12.04.2010

International application No.

PCT/US 10/22277

Box No. V Reasoned statement under Rule 43bis.l(a)(i) with regard to novelty, inventive step or industrial applicability; citations and explanations supporting such statement

I. Statement

Novelty (N) Claims 1-26 and 45-85 YES

Claims none NO

Inventive step (IS) Claims none YES

Claims 1-26 and 45-85 NO

Industrial applicability (lA) Claims 1-26 and 45-85 YES

Claims none NO

2. Citations and explanations: Claims 47-50 lack an inventive step under PCT Article 33(3) as being obvious over US 2006/0216265 A1 to Goodman et al. (hereinafter 'Goodman').

Regarding claim 47, Goodman does not specify a crystalline insulin-conjugate of formula (llld-1):, but does disclose where two carboxylic acid groups may react with a diaminoalkane to produce a product containing two amide containing branches. It would have been obvious to one of ordinary skill in the art that the diamine could be diamino hexane for the formation of a diamido hexane as shown. Goodman further discloses wherein WI is an insulin molecule (para [0201], [0215], [0227]); and wherein each occurrence of -X is a tetrahydropyranyl group as shown (para [0116]).

Regarding claim 48, Goodman discloses wherein the insulin molecule is selected from the group consisting of human insulin, porcine insulin, and bovine insulin (para [0201]).

Regarding claim 49, Goodman discloses wherein the insulin molecule is selected from insulin and insulin analogs (para [0215]) but does not specify the group consisting of insulin lispro, insulin aspart and insulin glulisine. However, these insulin analogs would have been obvious to one of ordinary skill in the art as they were well known commercially available insulin analogs.

Regarding claim 50, Goodman discloses wherein the insulin molecule is selected from insulin and insulin analogs (para [0215]) but does not specify insulin glargine or insulin detemir. However, these insulin analogs would have been obvious to one of ordinary skill in the art as they were well known commercially available insulin analogs.

Claims 51-77, 81 and 831ack an inventive step under PCT Article 33(3) as being obvious over US 2006/0019874 A1 to Radhakrishnan et al. (hereinafter 'Radhakrishnan').

Regarding claim 51, Radhakrishnan discloses a crystalline insulin-conjugate (para [0511]) comprising an insulin molecule conjugated to one or more ligands that are independently selected from the group consisting of saccharides (para [0067]), but does not specify aminoethylglucose (AEG), aminoethylmannose (AEM), aminoethylbimannose (AEBM), aminoethyltrimannose (AETM), [3- aminoethyi-Nacetylglucosamine (AEGA), and aminoethylfucose (AEF). However, it would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of saccharides in order to obtain ligands with the desired hydrophilic character.

Regarding claim 52, Radhakrishnan discloses wherein the insulin molecule is conjugated via the epsilon-amino group of LysB29 (para (0473]).

Regarding claim 53, Radhakrishnan discloses a crystalline insulin-conjugate (para [0511]) comprising an insulin molecule conjugated to one or more ligands that are independently selected from the group consisting of saccharides such as glucose (para [0067]), but does not specify aminoethylglucose (AEG). However, it would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of glucose in order to obtain ligands with the desired hydrophilic character.

Regarding claim 54, Radhakrishnan discloses a crystalline insulin-conjugate (para [0511]) comprising an insulin molecule conjugated to one or more ligands that are independently selected from the group consisting of saccharides such as man nose (para [0067]), but does not specify aminoethylmannose (AEM). However, it would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of man nose in order to obtain ligands with the desired hydrophilic character.

Regarding claim 55, Radhakrishnan discloses a crystalline insulin-conjugate (para [0511]) comprising an insulin molecule conjugated to one or more ligands that are independently selected from the group consisting of disaccharides of man nose (para [0067]), but does not specify aminoethylbimannose (AEBM). However, it would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of bimannose in order to obtain ligands with the desired hydrophilic character.

------------------------------------------Continued in Supplemental Box---------·-···························

Form PCT/ISA/237 (Box No. V) (July 2009)

PCT/US201 0/022277 12.04.2010


Supplemental Box

In case the space in any of the preceding boxes is not sufficient. Continuation of:

Box No. V. 2. Citations and explanations:


PCT/US 10/22277

Regarding claim 56, Radhakrishnan discloses a crystalline insulin-conjugate (para [0511]) comprising an insulin molecule conjugated to one or more ligands that are independently selected from the group consisting of trisaccharides of man nose (para [0067]), but does not specify aminoethyltrimannose (AETM). However, it would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of trimannose in order to obtain ligands with the desired hydrophilic character.

Regarding claim 57, Radhakrishnan discloses a crystalline insulin-conjugate (para [0511]) comprising an insulin molecule conjugated to one or more ligands that are independently selected from the group consisting of saccharides (para [0067]), but does not specify Baminoethyi-N-acetylglucosamine (AEGA). N-acetylglucosamine was a well known saccharide ligand for biological molecules. It would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of N-acetylglucosamine in order to obtain ligands with the desired hydrophilic character.

Regarding claim 58, Radhakrishnan discloses a crystalline insulin-conjugate (para [0511]) comprising an insulin molecule conjugated to one or more ligands that are independently selected from the group consisting of saccharides (para [0067]), but does not specify aminoethylfucose (AEF). Fucose was a well known saccharide ligand for biological molecules. It would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of fucose in order to obtain ligands with the desired hydrophilic character.

Regarding claim 59, Radhakrishnan discloses wherein the insulin molecule is conjugated to two or more separate ligands (para [0471], [0475], more than one moiety may be coupled to the insulin).

Regarding claim 60, Radhakrishnan discloses wherein the insulin molecule is conjugated to two separate ligands (para [0471], [0475], more than one moiety may be coupled to the insulin).

Regarding claim 61, Radhakrishnan discloses wherein the insulin molecule is conjugated to three separate ligands (para [0471 ]).

Regarding claim 62, Radhakrishnan does not specify wherein the two or more separate ligands are conjugated to a single conjugate framework that is also conjugated to the insulin molecule, but does disclose a variety of coupling modes and combinations of different conjugates (para [0471]-[0480]), and wherein the conjugate is tailored to provide the desired attributes (para [0482]). One of ordinary skill in the art could derive a conjugate wherein the two or more separate ligands are conjugated to a single conjugate framework that is also conjugated to the insulin molecule, in order to provide the desired attributes, without undue experimentation.

Regarding claim 63, Radhakrishnan does not specify wherein the two or more separate ligands and insulin molecule are each located on a separate branch of a single branched conjugate framework, but does disclose a variety of coupling modes and combinations of different conjugates (para [0471]-[0480]), which may be branched (para [0041]), and wherein the conjugate is tailored to provide the desired attributes (para [0482]). One of ordinary skill in the art could derive a conjugate wherein the two or more separate ligands and insulin molecule are each located on a separate branch of a single branched conjugate framework, in order to provide the desired attributes, without undue experimentation.

Regarding claim 64, Radhakrishnan does not specify wherein the two or more separate ligands and insulin molecule are each located on termini of separate branches of a single branched conjugate framework, but does disclose a variety of coupling modes and combinations of different conjugates (para [0471]-[0480]), which may be branched (para [0041]), and wherein the conjugate is tailored to provide the desired attributes (para [0482]). One of ordinary skill in the art could derive a conjugate wherein the two or more separate ligands and insulin molecule are each located on termini of separate branches of a single branched conjugate framework, in order to provide the desired attributes, without undue experimentation.

Regarding claims 65 and 71, Radhakrishnan does not specify wherein the two or more separate ligands are aminoethylglucose (AEG), but does disclose a crystalline insulin-conjugate (para [0511]) comprising an insulin molecule conjugated to one or more ligands that are independently selected from the group consisting of saccharides such as glucose (para [0067]). It would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of glucose in order to obtain ligands with the desired hydrophilic character.

Regarding claims 66 and 72, Radhakrishnan does not specify wherein the two or more separate ligands are aminoethylmannose (AEM), but does disclose a crystalline insulin-conjugate (para [0511]) comprising an insulin molecule conjugated to one or more ligands that are independently selected from the group consisting of saccharides such as mannose (para [0067]). It would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of man nose in order to obtain ligands with the desired hydrophilic character.

Regarding claims 67 and 73, Radhakrishnan does not specify wherein the two or more separate ligands are aminoethylbimannose (AEBM), but does disclose a crystalline insulin-conjugate (para [0511]) comprising an insulin molecule conjugated to one or more ligands that are independently selected from the group consisting of disaccharides of mannose (para [0067]). It would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of bimannose in order to obtain ligands with the desired hydrophilic character.

Regarding claims 68 and 74, Radhakrishnan does not specify wherein the two or more separate ligands are aminoethyltrimannose (AETM), but does disclose a crystalline insulin-conjugate (para [0511]) comprising an insulin molecule conjugated to one or more ligands that are independently selected from the group consisting of trisaccharides of man nose (para [0067]). It would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of trimannose in order to obtain ligands with the desired hydrophilic character.

------------------------------------------Continued in Supplemental Box--------------------------------------

Form PCT/ISA/237 (Supplemental Box) (July 2009)

PCT/US201 0/022277 12.04.2010



Supplemental Box



PCT/US 10/22277

Regarding claims 69 and 75, Radhakrishnan does not specify wherein the two or more separate ligands are (3-aminoethyi-Nacetylglucosamine (AEGA), but does disclose a crystalline insulin-conjugate (para [0511]) comprising an insulin molecule conjugated to one or more ligands that are independently selected from the group consisting of saccharides (para [0067]). N-acetylglucosamine was a well known saccharide ligand for biological molecules. It would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of N-acetylglucosamine in order to obtain ligands with the desired hydrophilic character.

Regarding claims 70 and 76, Radhakrishnan does not specify wherein the two or more separate ligands are aminoethylfucose (AEF), but does disclose a crystalline insulin-conjugate (para [0511]) comprising an insulin molecule conjugated to one or more ligands that are independently selected from the group consisting of saccharides (para [0067]) Fucose was a well known saccharide liga_nd for biological molecules. It would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of fucose in order to obtain ligands with the desired hydrophilic character.

Regarding claim 77, Radhakrishnan further discloses wherein the insulin molecule is conjugated via the epsilon-amino group of LysB29 (para [0473]).

Regarding claim 81, Radhakrishnan does not specify a crystalline insulin-conjugate of formula:l-8. However, Radhakrishnan does disclose B29 conjugated insulin (para [0473]), linked to a saccharide ligand such as glucose (para [0067]), comprising moieties derived from dicarboxylic acids (para [0082]). It would have been obvious to one of ordinary skill in the art to use an aminoethyl derivative of glucose in order to obtain ligands with the desired hydrophilic character. It would have been obvious to one of ordinary skill in the art that a hexane dicarboxylic acid could be employed to link the aminoethyl glucose to insulin via available amine groups.

Regarding claim 83, Radhakrishnan does not specify a crystalline insulin-conjugate of formula:l-10. However, Radhakrishnan does disclose B29 conjugated insulin (para [0473]), linked to a mannosse trisaccharide ligand (para [0067]), comprising moieties derived from dicarboxylic acids (para [0082]). It would have been obvious to one of ordinary skill in the art to use an aminoethyl derivative of trimannose in order to obtain ligands with the desired hydrophilic character. It would have been obvious to one of ordinary skill in the art that a hexane dicarboxylic acid could be employed to link the aminoethyl trimannose to insulin via available amine groups.

Claims 1-5, 14-26, 46, 82 and 84 lack an inventive step under PCT Article 33(3) as being obvious over Goodman in view of Radhakrishnan.

Regarding claim 1, Goodman discloses an insulin-conjugate (para [0511]) of formula (I): wherein:each occurrence of [(A--T)] represents a potential branch within the conjugate (para [0145]); each occurrence of (A--T) represents a potential repeat within a branch of the conjugate (para [0145]; each occurrence of [A] is independently a covalent bond, a carbon atom, a heteroatom, or an optionally substituted group selected from

the group consisting of acyl, aliphatic, heteroaliphatic, and aryl (para [0145]); each occurrence ofT is independently a covalent bond or a bivalent, straight or branched, saturated or unsaturated, optionally substituted C 1-30 hydrocarbon chain wherein one or more methylene units ofT are optionally and independently replaced by -0-, -N(R)-, -C(O)-, -C(O)O-, -OC(O)-, -N(R)C(O)-, -C(O)N(R)-, - (para [0145]); each occurrence of R is independently hydrogen, a suitable protecting group (para [0263]), or an acyl moiety, aliphatic moiety, or heteroaliphatic moiety (para [0145]). -B is -T-LB-X; each occurrence of L B is independently a covalent bond or a group derived from the covalent conjugation of a Twith an X (para [0145]); -Dis_ T _LD_WI; WI is an insulin molecule (para [0145]), [0167], [0201]); each occurrence of L Dis independently a covalent bond or a group derived from the covalent conjugation of a Twith a WI (para [0145]); k is an integer from 1 to 12, inclusive (para [0145], k is 1 ); each occurrence of pis independently an integer from 1 to 5, inclusive (para [0145), p is 2); and each occurrence of n is independently an integer from 0 to 5, inclusive(para [0145], n is 3); and each occurrence of m is independently an integer from 1 to 5, inclusive(para [0145], m is 1 ); and each occurrence of vis independently an integer from 0 to 5 (para [0145], vis 1 where B is an arginine). Goodman does not disclose each occurrence of X is independently a ligand that includes a saccharide. Radhakrishnan discloses crystalline conjugates of insulin (para [0511]) comprising saccharide ligands (para [0067], sugars). It would have been obvious to one of ordinary skill in the art to include a saccharide ligand, as taught by Radhakrishnan, in the insulin conjugates taught by Goodman, to obtain the invention as claimed, because such moieties may modulate the solubilty and other chemical properties of the complex, as taught by Radhakrishnan (para [0482)-[0487]).

Regarding claim 2, Goodman further discloses a conjugate of formula (lila) (para [0145]).

Regarding claim 3, Goodman further discloses a conjugate of formula (llla-1) (para [0145]).

Regarding claim 4, Goodman does not precisely specify a conjugate of formula (llla-2): but does disclose a conjugate differing only by the number of methylene units in the alkyl chains (para [0145]). A conjugate of formula llla-2 could have been derived by one of ordinary skill in the art without undue experimentation.



PCT/US201 0/022277 12.04.2010


Supplemental Box




PCT/US 10/22277

Regarding claim 5, Goodman does not precisely specify a conjugate of formula (llla-3): but does disclose a conjugate differing only by the number of methylene units in the alkyl chains (para [0145]). A conjugate of formula llla-3 could have been derived by one of ordinary skill in the art without undue experimentation.

Regarding claim 14, Goodman discloses wherein the conjugate is of formula (lllc) (para [0019], formula VI).

Regarding claim 15, Goodman does not precisely disclose formula (lllc-1), but discloses a conjugate similar to formula (lllc-1), wherein 3 ethyl amide groups are linked to the tetravalent carbon via an ether linkage, and a fourth ethyl amide group is attached via an amide bond (para [0019], formula VI). It would have been obvious to one of ordinary skill in the art that all four ethyl amide groups may be attached via an ether linkage, in order to obtain a conjugate of the desired chemical and physical properties.

Regarding claim 16, Goodman does not precisely disclose formula (lllc-2), but discloses a conjugate similar to formula (lllc-2), wherein 3 ethyl amide groups are linked to the tetravalent carbon via an ether linkage, and a fourth ethyl amide group is attached via an amide bond (para [0019], formula VI). It would have been obvious to one of ordinary skill in the art that all four amide groups may be attached via an ether linkage, and that the amide groups could be butyl amide groups , in order to obtain a conjugate of the desired chemical and physical properties.

Regarding claim 17, Goodman discloses wherein each occurrence ofT is independently a bivalent, straight, saturated, substituted C 1·20 hydrocarbon chain wherein one or more methylene units ofT are optionally and independently replaced by ·0·, ·N(R)·, -C(O)·, -N(R)C(O)·, -C(O)N(R)·, (para [0019], formula VI).

Regarding claim 18, Goodman discloses wherein one, two, three, four, or five methylene units ofT are optionally and independentlyr replaced by ·0·, ·N(R)·, -C(O)·, ·N(R)C(O)·, ·C(O)N(R)·, (para [0019], formula VI).

Regarding claim 19, Goodman discloses wherein Tis constructed from a C1 • 10 hydrocarbon chain wherein one or more methylene units ofT are optionally and independentlyreplaced by ·0·, ·N(R)·, -C(O)·, ·N(R)C(O)·, ·C(O)N(R)·, (para [0019], formula VI).

Regarding claim 20, Goodman discloses wherein one or more methylene units of T is replaced by -C(O)· (para [0019], formula VI).

Regarding claim 21, Goodman discloses wherein one or more methylene units ofT is replaced by -C(O)N(R)· (para [0019], formula VI, wherein R is ethyl guanidine).

Regarding claim 22, Goodman discloses wherein one or more methylene units ofT is replaced by ·O·(para [0019], formula VI).

Regarding claim 23, Goodman discloses wherein each occurrence ofT is the same (para [0019], formula VI).

Regarding claim 24. The crystalline insulin-conjugate of claim 2, 6 or 14, wherein L B is a covalent bond (para [0019], formula VI, wherein X is ethyl guanidine).

Regarding claim 25, wherein L B is an optionally substituted moiety derived from conjugating an optionally substituted carbonylreactive, or amine-reactive moiety ofT with a carboxyl, or amine, group of X (para [0019], formula VI, amide bond linking guanidine group).

Regarding claim 26, Goodman discloses wherein L B is an optionally substituted moiety derived from conjugating an optionally substituted carboxyl reactive, or amine-reactive moiety of X with a carboxyl, or amine, ofT (para [0019], formula VI, amide bond linking guanidine group).

Regarding claim 46, Goodman and Radhakrishnan disclose a crystalline insulin-conjugate of formula (lllc-2): as discussed in claim 16 above, and Goodman discloses wherein WI is an insulin molecule (para [0201], [0215], [0227]); and wherein each occurrence of ·X is a tetrahydropyranyl group as shown (para [0116]).

Regarding claim 82, Goodman does not precisely disclose formula (1·9), but discloses a conjugate similar to formula (1·9), wherein 3 ethyl amide groups are linked to the tetravalent carbon via an ether linkage, and a fourth ethyl amide group is attached via an amide bond (para [0019], formula VI). It would have been obvious to one of ordinary skill in the art that all four ethyl amide groups may be attached via an ether linkage, in order to obtain a conjugate of the desired chemical and physical properties. Goodman does not disclose B29 conjugated insulin or aminoethyl glucose moieties. Radhakrishnan discloses a crystalline insulin-conjugate (para [0511 ]), comprising saccharide ligands such as glucose (para [0067]), and a B29 conjugated insulin molecule (para [0473]), but does not specify aminoethyl glucose. However, it would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of glucose in order to obtain ligands with the desired hydrophilic character. It would have been obvious to one of ordinary skill in the art to include a saccharide ligand, as taught by Radhakrishnan, in the insulin conjugates taught by Goodman, to obtain the invention as claimed, because such moieties may modulate the solubilty and other chemical properties of the complex, as taught by Radhakrishnan (para [0482]·[0487]).

··········································Continued in Supplemental Box······································

Form PCT/ISN237 (Supplemental Box) (July 2009)

PCT/US201 0/022277 12.04.2010


Supplemental Box




PCT/US 10/22277

Regarding claim 84, Goodman does not precisely disclose formula (1-11 ), but discloses a conjugate similar to formula (1-11 ), wherein 3 ethyl amide groups are linked to the tetravalent carbon via an ether linkage, and a fourth ethyl amide group is attached via an amide bond (para [0019), formula VI). It would have been obvious to one of ordinary skill in the art that all four ethyl amide groups may be attached via an ether linkage, in order to obtain a conjugate of the desired chemical and physical properties. Goodman does not disclose B29 conjugated insulin or aminoethyl glucose moieties. Radhakrishnan discloses a crystalline insulin-conjugate (para [0511 ]), comprising trimannose saccharide ligands (para [0067]), and aB29 conjugated insulin molecule (para [0473]), but does not specify aminoethyl trimannose. It would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of trimannose in order to obtain ligands with the desired hydrophilic character. It would have been obvious to one of ordinary skill in the art to include a saccharide ligand, as taught by Radhakrishnan, in the insulin conjugates taught by Goodman, to obtain the invention as claimed, because such moieties may modulate the solubilty and other chemical properties of the complex, as taught by Radhakrishnan (para [0482)-[0487]). ·

Claims 78-80 and 85 lack an inventive step under PCT Article 33(3) as being obvious over Radhakrishnan, in view of US 5,527,524 A to Tomalia et al. (hereinafter 'Tomalia').

Regarding claim 78, Radhakrishnan discloses a crystalline insulin-conjugate (para [0511]), comprising saccharide ligands (para (0067]), and a B29 conjugated insulin molecule (para [0473]), but does not specify an N-acetylglucosamine ligand in a conjugate of formula: 1-5. Nacetylglucosamine was a well known saccharide ligand for biological molecules. It would have been obvious to one of ordinary skill in the art to use N-acetylglucosamine in order to obtain ligands with the desired hydrophilic character. Tomalia discloses triamidoamine conjugates (col Sin 50-55) and conjugates similar to formula (1-5): (col181n 25), wherein the amido moiety could be derived from any amine containing species (col 4 In 25-30). The amido moieties of formula (1-5) comprise lysine groups. It would have been obvious to one of ordinary skill in the art to employ moieties derived from lysine to form a triamidoamine conjugate, because lysine was a widely employed group for conjugating biological molecules. It would have been obvious to one of ordinary skill in the art to use the compounds taught by Tomalia, to form the conjugates taught by Radhakrishnan, to obtain the invention as claimed, because they provide a framework for conjugation of multiple biological agents.

Regarding claim 79, Radhakrishnan discloses a crystalline insulin-conjugate (para [0511]), comprising mannose trisaccharide ligands (para [0067]), and a B29 conjugated insulin molecule (para [0473]), but does not specify an aminoethyl trimannose in a conjugate of formula: 1-6. It would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of trimannose in order to obtain ligands with the desired hydrophilic character. Tomalia discloses triamidoamine conjugates (col5 In 50-55) and conjugates similar to formula (1-6): (col181n 25), wherein the amido moiety could be derived from any amine containing species (col 4 In 25-30). The amido moieties of formula (1-6) comprise lysine groups. It would have been obvious to one of ordinary skill in the art to employ moieties derived from lysine to form a triamidoamine conjugate, because lysine was a widely employed group for conjugating biological molecules. It would have been obvious to one of ordinary skill in the art to use the compounds taught by Tomalia, to form the conjugates taught by Radhakrishnan, to obtain the invention as claimed, because they provide a framework for conjugation of multiple biological agents.

Regarding claim 80, Radhakrishnan discloses a crystalline insulin-conjugate (para [0511)), comprising saccharide ligands such as glucose (para [0067]), and aB29 conjugated insulin molecule (para [0473]), but does not specify aminoethyl glucose in a conjugate of formula::l-7. It would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of glucose in order to obtain ligands with the desired hydrophilic character. Tomalia discloses triamidoamine conjugates (col Sin 50-55) and conjugates similar to formula (1-7): (col 181n 25), wherein the amido moiety could be derived from any amine containing species (col4 In 25-30). The amido moieties of formula (1-7) comprise lysine groups. It would have been obvious to one of ordinary skill in the art to employ moieties derived from lysine to form a triamidoamine conjugate, because lysine was a widely employed group for conjugating biological molecules. It would have been obvious to one of ordinary skill in the art to use the compounds taught by Tomalia, to form the conjugates taught by Radhakrishnan, to obtain the invention as claimed, because they provide a framework for conjugation of multiple biological agents.

Regarding claim 85, Radhakrishnan discloses a crystalline insulin-conjugate (para [0511]), comprising saccharide ligands such as glucose (para (0067]), and aB29 conjugated insulin molecule (para [0473]), but does not specify aminoethyl glucose in a conjugate of formula::l-17. It would have been obvious to one of ordinary skill in the art to use aminoethyl derivatives of glucose in order to obtain ligands with the desired hydrophilic character. Tomalia discloses triamidoamine conjugates (col51n 50-55) and conjugates similar to formula (1-17): (col181n 25), wherein the amido moiety could be derived from any amine containing species (col41n 25-30). The amido moieties of formula (1-17) comprise lysine groups and an amido moietiy comprising 4 methylene units linked to insulin. It would have been obvious to one of ordinary skill in the art to employ moieties derived from lysine to form an amidoamine conjugate, because lysine was a widely employed group for conjugating biological molecules, and other similar amidoamine moieties for linking other groups. It would have been obvious to one of ordinary skill in the art to use the compounds taught by Tomalia, to form the conjugates taught by Radhakrishnan, to obtain the invention as claimed, because they provide a framework for conjugation of multiple biological agents.




Supplemental Box



PCT/US201 0/022277 12.04.2010


PCT/US 10/22277

Claims 6-13 and 451ack an inventive step under PCT Article 33(3) as being obvious over Goodman, in view of Radhakrishnan, and further in view of Tomalia.

Regarding claim 6, Goodman and Radhakrishnan do not specify wherein the conjugate is of formula (lllb): Tomalia discloses trisubstituted amines (col 5 In 50-55, three amidoamine moieties) useful for forming conjugates for the delivery of biological agents (col1 In 35-50). II would have been obvious to one of ordinary skill in the art to use the compounds taught by Tomalia, to form the conjugates taught by Goodman and Radhakrishnan, to obtain the invention as claimed, because they provide a framework for conjugation of multiple biological agents.

Regarding claim 7, Tomalia discloses wherein the conjugate is of the formula (lllb-1): (col 5 In 50-55, three amidoamine moieties).

Regarding claim 8, Tomalia does not explicitly disclose formula (lllb-2), but discloses a conjugate similar to formula (lllb-2): (col18 In 25), differing in the number of methylene units between nitrogens, and in the number of amidoamine functionalities. Tomalia does disclose conjugates comprising three amidoamine moieties, and amidoamines comprising a single methylene moiety between nitrogens, as in formula (lllb-2), would have been obvious to one of ordinary skill in the art.

Regarding claim 9, Tomalia does not explicitly disclose formula (lllb-3), but discloses triamidoamine conjugates (col 5 In 50-55) and conjugates similar to formula (lllb-3): (col181n 25), wherein the amido moiety could be derived from any amine containing species (col 41n 25-30). The amido moieties of formula (lllb-3) comprise lysine groups. It would have been obvious to one of ordinary skill in the art to employ moieties derived from lysine to form a triamidoamine conjugate, because lysine was a widely employed group for conjugating biological molecules.

Regarding claim 10, Tomalia does not explicitly disclose formula (lllb-4), but discloses triamidoamine conjugates (col5 In 50-55) and conjugates similar to formula (lllb-4): (col181n 25), wherein the amido moiety could be derived from any amine containing species (col 41n 25-30). amidoamine moieties comprising six methylene units would have been obvious to one of ordinary skill in the art.

Regarding claim 11, Tomalia does not explicitly disclose formula (lllb-5), but discloses triamidoamine conjugates (col 5 In 50-55) and conjugates similar to formula (lllb-5): (col181n 25), wherein the amido moiety could be derived from any amine containing species (col 41n 25-30). The amidoamine groups of formula (lllb-5) would have been obvious to one of ordinary skill in the art.

Regarding claim 12, Tomalia does not explicitly disclose formula (lllb-6), but discloses triamidoamine conjugates (col5 In 50·55) and conjugates similar to formula (lllb-6): (col18 In 25), wherein the amido moiety could be derived from any amine containing species (col 4 In 25·30). The amidoamine groups of formula (lllb-6) would have been obvious to one of ordinary skill in the art.

Regarding claim 13, Tomalia does not explicitly disclose formula (lllb-7), but discloses triamidoamine conjugates (col 5 In 50-55) and conjugates similar to formula (lllb-7): (col181n 25), wherein the amido moiety could be derived from any amine containing species (col41n 25-30). The amidoamine groups of formula (lllb-7) would have been obvious to one of ordinary skill in the art.

Regarding claim 45, Goodman, Tomalia, and Radhakrishnan suggest crystalline insulin-conjugate of formula (lllb-3), as discussed in claim 9 above, and Goodman discloses wherein: WI is an insulin molecule (para [0201], (0215], [0227]); and wherein each occurrence of -X is a tetrahydropyranyl group as shown (para [0116])

Claims 1-26, and 45-85 have industrial applicability as defined by PCT Article 33(4) because the subject matter can be made or used in industry.

Form PCT/ISN237 (Supplemental Box) (July 2009)

5723

Documents