Ex Parte Cloyd et al

Patent Trial and Appeal Board

Dec 15, 2016

13547866 (P.T.A.B. Dec. 15, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/547,866 07/12/2012 James Cloyd 2205889.00127US2 5399
28089 7590 12/19/2016
WTT MFRHAT F./NF.W YORK
EXAMINER
7 WORLD TRADE CENTER JIANG, SHAOJIA A
250 GREENWICH STREET
NEW YORK, NY 10007 ART UNIT PAPER NUMBER
1673
NOTIFICATION DATE DELIVERY MODE
12/19/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
whipusptopairs@wilmerhale.com
teresa.maia@wilmerhale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES CLOYD, ANGELA BIRNBAUM,
ILO LEPPIK, and STEPHEN D. COLLINS
Appeal 2014-007949
Application 13/547,866
Technology Center 1600
Before JEFFREY N. FREDMAN, TIMOTHY G. MAJORS, and
KRISTI L. R. SAWERT, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35U.S.C. § 134 involving claims to a
parenteral method of administering a carbamazepine sulfoalkyl-cyclodextrin
composition. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 Appellants identify the Real Party in Interest as Lundbeck LLC (see App.
Br. 2).
Appeal 2014-007949
Application 13/547,866
Statement of the Case
Background
“Carbamazepine ... is a widely used antiepileptic agent. It is
available in the U.S. as Tegretol’ brand chewable tablets . . . intended for
oral administration as a treatment for epilepsy or as a specific analgesic for
trigeminal neuralgia” (Spec. 12). “The absence of an intravenous
formulation places patients treated with carbamazepine (sometimes referred
to herein as CBZ) at substantial medical risk. Sudden discontinuation of
CBZ therapy for whatever reason, can expose an individual to potentially
life threatening seizure emergencies” (Spec. 1 8).
“The carbamazepine-cyclodextrin inclusion complexes of the present
invention satisfy a significant unmet medical need for a stable injectable
formulation of carbamazepine that overcomes the limitations of poorly
soluble and variably absorbed oral formulations” (Spec. 115).
The Claims
Claims 1^1, 7, 8, 10-13, 16, 17, 2A-29, 37, 38, 41, 45, 46, and 49-58
are on appeal. Independent claim 1 is representative and reads as follows:
1. A method of administering a carbamazepine sulfoalkyl-
cyclodextrin composition to a human in need thereof comprising,
a) providing a carbamazepine sulfoalkyl-cyclodextrin
composition, and
b) parenterally infusing said composition to said human,
wherein the composition is administered as a replacement for oral
carbamazepine in a dose of about 30% to about 100% of the human’s
oral maintenance dose.
2
Appeal 2014-007949
Application 13/547,866
The Issue
The Examiner rejected claims 1—4, 7, 8, 10—13, 16, 17, 24—29, 37, 38,
41, 45, 46, and 49—58 under 35 U.S.C. § 103(a) as obvious Brewster,2
Stella,3 Thompson,4 Bodor,5 Becirevic-Lacan,6 and Ansel7 (Ans. 2—13).
The Examiner finds Brewster teaches “the development of aqueous
parenteral formulations for carbamazepine through the use of modified
cyclodextrins” (Ans. 2). The Examiner acknowledges that Brewster does
“not expressly disclose a carbamazepine/CD complex wherein the
cyclodextrin is a sulfoalkyl cyclodextrin” (Ans. 4).
The Examiner finds Stella teaches “sulfoalkyl ether cyclodextrin
derivatives and their use as solubilizing agents for water insoluble drugs for
oral, intranasal, or parenteral administration” (Ans. 4). The Examiner finds
Thompson teaches “sulfobutyl ether and hydroxypropyl [3-CDs are
incorporated into approved parenteral products” (Ans. 5).
The Examiner finds Bodor “teaches a method of improving the oral
bioavailability of carbamazepine using complexes of the drug with selected
2 Brewster et al., Development of Aqueous Parenteral Formulations for
Carbamazepine through the Use of Modified Cyclodextrins, 80 J.
Pharmaceutical Sciences 380-383 (1991) (“Brewster”).
3 Stella et al., US 5,134,127, issued July 28, 1992 (“Stella”).
4 Thompson and Chaubal, Cyclodextrins (CDS) — Excipients by Definition,
Drug Delivery Systems by Function (Parti: Injectable Applications), 2 Drug
Delivery Technology 34, 36, 38 (2002) (“Thompson”).
5 Bodor, N., US 5,231,089, issued July 27, 1993 (“Bodor”).
6 Becirevic-Lacan et al., Development of o/w emulsion formulation for
carbamazepine by using modified cyclodextrins, 52 Acta Pharm. 149—159
(2002) (“Becirevic-Lacan”).
7 Ansel et al., Pharmaceutical Dosage Forms and Drug Delivery Systems
23—59 (Donna Balado ed., 1999) (“Ansel”).
3
Appeal 2014-007949
Application 13/547,866
cyclodextrin derivatives” (Ans. 6). The Examiner finds Becirevic-Lacan
teaches “development of o/w emulsion formulation for carbamazepine by
using modified cyclodextrins” (Ans. 6). The Examiner finds Ansel teaches
the “schedule of dosage, or the dosage regimen, is determined during the
clinical investigation and is based largely on a drug’s inherent duration of
action, its pharmacokinetics, and the characteristics of the dosage form”
(Ans. 7).
The Examiner finds it obvious to
substitute the HP-[3-CD in the carbamazepine composition
taught by Brewster et al. with a SBE[3CD as disclosed in the
Stella ’127 patent, in order to receive the expected benefit, as
disclosed in the Stella ’127 patent, that the phase solubility
behavior of their disclosed sulfoalkyl derivatives showed it to
be five times greater than that for HP[3CD. . . . One of ordinary
skill in the art would have a reasonable expectation of success
since Thompson et al. teach that both sulfobutyl ether and
hydroxypropyl [3-CDs are incorporated into approved parenteral
products.
(Ans. 8-9).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the prior art render the claims
obvious?
Findings of Fact
1. Brewster teaches
Carbamazepine (CBZ) has become the world’s most used
anticonvulsant agent.... Unfortunately, monotherapy is not
possible with CBZ when a parenteral dosage form is required
since no iv formulation is currently available. The basis for this
deficit is the extremely poor water solubility of the drug. In
order to provide a parenteral formulation of CBZ for
4
Appeal 2014-007949
Application 13/547,866
circumstances where such administration would be
advantageous in pediatric and emergency medicine and in
managing the epileptic surgical patient, the development of
aqueous formulations of CBZ was undertaken. In this study,
chemically modified J3- and y-cyclodextrins were considered.
(Brewster 380, col. 1).
2. Brewster teaches “an aqueous CBZ:HPpCD complex could
serve as a viable and effective parenteral dosage form for CBZ” (Brewster
383, col. 2).
3. Stella teaches the “use of cyclodextrins in the clinical setting is
limited to oral and topical dosage forms as the cyclodextrins exhibit
nephrotoxicity upon entering the body unmetabolized” (Stella 2:46-49).
4. Stella teaches the “sulfoalkyl cyclodextrin derivatives of the
invention exhibited no observable toxic effects” (Stella 13:42-43).
5. Thompson teaches “modified cyclodextrins, sulfobutyl ether
(SBE-P-CD) and hydroxypropyl (HP-P-CD) derivatives were developed to
improve the solubilizing capacity by increasing the overall solubility of the
CD and to improve the systemic safety of the CDs. . . . Both SBE-P-CD and
HP-P-CD are incorporated into approved parenteral products” (Thompson
36, col. 2).
6. Bodor teaches for “complex partial seizures (temporal lobe,
psychomotor), carbamazepine is considered the anticonvulsant drug of
choice” (Bodor 1:35—37).
7. Bodor teaches “[bjecause of the lack of an injectable
formulation for carbamazepine, there has not been precise information
relating to the drug’s absolute bioavailability” (Bodor 3:14—16).
5
Appeal 2014-007949
Application 13/547,866
8. Becirevic-Lacan teaches the “method that has increased
carbamazepine aqueous solubility, dissolution rate and bioavailability is
cyclodextrin complexation” (Becirevic-Lacan 150).
9. Ansel teaches “in many instances, a lower parenteral
(injectable) dose of a drug is required than the oral dose to achieve the same
blood levels or clinical effects” (Ansel 53, col. 1).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Prima facie obviousness can be rebutted by presenting evidence of
secondary considerations and when such evidence is submitted, all of the
evidence must be considered anew. In re Piasecki, 745 F.2d 1468, 1472—
1473 (Fed. Cir. 1984). Secondary considerations include: long-felt but
unsolved needs, failure of others, unexpected results, commercial success,
copying, licensing, and praise. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998).
Analysis
We adopt the Examiner’s findings regarding the scope and content of
the prior art (Ans. 2—13) and agree with the Examiner’s initial determination
that the method of parenterally administering a carbamazepine sulfoalkyl-
cyclodextrin composition would have been prima facie obvious in view of
the cited references taken alone. Appellants present arguments disputing the
Examiner’s case of obviousness on the references alone, but we do not find
it necessary to address these arguments since, as discussed below, we
6
Appeal 2014-007949
Application 13/547,866
conclude that the secondary consideration evidence of long felt need has
successfully rebutted the Examiner’s prima facie case.
To establish a long-felt need, three elements must be proven: First,
the need must have been a persistent one that was recognized by ordinarily
skilled artisans. In re Gershon, 372 F.2d 535, 538 (CCPA 1967). Second,
the long-felt need must not have been satisfied by another before Appellants’
invention. See Newell Companies, Inc. v. Kenney Mfg. Co., 864 F.2d 757,
768 (Fed. Cir. 1988) (“[OJnce another supplied the key element, there was
no long-felt need or, indeed, a problem to be solved . . . .”). Third, the
invention must, in fact, satisfy the long-felt need. In re Cavanagh, 436 F.2d
491,496 (CCPA 1971).
The first element, that there was a persistent need, is established
through the teachings of Brewster, Bodor, and the Schachter and Cloyd
Declarations.8,9 Brewster and Bodor evidence that parenteral forms of
carbamazepine were not available as of their publication dates (FF 1,7).
The Schachter Declaration evidences that as of 2012 “[pjatients
experiencing status epilepticus do not have CBZ available as an intravenous
formulation. In these cases, patients who do not respond to other
intravenous antiepileptic drugs often die” (Schachter Deck 111). The
Schachter Declaration further states “clinicians, including myself, who treat
epileptic patients have long considered a parenteral CBZ formulation as an
unmet medical need in several different circumstances” (Schachter Deck
113). The Cloyd Declaration states “[ujntil now, no intravenous CBZ
8 Declaration of Dr. Steven C. Schachter, dated Sept. 10, 2012.
9 Declaration of Dr. James Cloyd, dated Sept. 25, 2013.
7
Appeal 2014-007949
Application 13/547,866
formulation has been available for patients on oral CBZ therapy. Patients on
oral CBZ who are unable to take the drug by mouth and, therefore, require
an injectable formulation must switch to an alternate antiepileptic drug”
(Cloyd Decl. 113). The Cloyd Declaration states that “the epilepsy
community has considered the availability of a parenteral CBZ formulation
as a long-standing, unmet medical need” (Cloyd Decl. 115).
The second element of long felt need is whether the long felt need was
satisfied by the prior art. While Brewster suggested parenteral cyclodextrin
carbamazepine compositions in 1991 (FF 2) and Brewster 199710 teaches “a
cyclodextrin-based formulation of CBZ may provide an acceptable
parenteral formulations” (Brewster 1997 339, col. 1), there is no evidence
suggesting that the hydroxypropyl-P-cyclodextrin-based formulation of
carbamazepine were used for parenteral human therapies prior to the instant
application date.
The situation can be compared to that in Monarch, where a district
court found “evidence of a long-felt need” but “concluded that it was not an
unsolved need because at least two companies had already designed low-
profile needles before the . . . priority filing date.” Monarch Knitting Mach.
Corp. v. Sulzer Morat GmbH, 139 F.3d 877, 883 (Fed. Cir. 1998). The
Federal Circuit vacated the district court’s determination, finding that
because neither prior art needle design was commercially available, the
evidence “raise[d] a reasonable inference that these two designs were
10 Brewster et al., Intravenous and Oral Pharmacokinetic Evaluation of a 2-
Hydroxypropyl-f-cyclodextrin-Based Formulation of Carbamazepine in the
Dog: Comparison with Commercially Available Tablets and Suspensions, 86
J. Pharmaceutical Sciences 335—339 (1997) (“Brewster 1997”).
8
Appeal 2014-007949
Application 13/547,866
isolated and failed to satisfy the long-felt need that existed at large.” Id. at
884.
Here, the evidence of record supports a finding that no parenteral
carbamazepine formulations were available as of Sept. 25, 2013 (see Cloyd
Decl. 113), and therefore that the Brewster disclosures did not satisfy the
long-felt need for a parenteral cyclodextrin carbamazepine composition.
The final element is whether the invention does, in fact, satisfy the
long-felt need. We take official notice of the fact that the FDA approved
Appellants’ CARNEXIV (carbamazepine) injection as replacement therapy
for oral carbamazepine formulations on October 7, 2016.11 We further take
official notice of the fact that “Camexiv is the first intravenous formulation
of carbamazepine, and it is expected to be available in the United States in
early 2017” (Vermes12 1).
We recognize, but find unpersuasive, the Examiner’s assertion that
“there must be a showing that others of ordinary skill in the art were
working on the problem and if so, for how long” (Ans. 15). In this case, the
evidence clearly demonstrates that others began working on the problem at
least as early as the publication of Brewster in 1991 without producing a
commercial embodiment prior to the instant filing date of July 12, 2012, a
11 FDA, http://www.accessdata.fda.gov/drugsatfda_docs/appletter/
2016/2060300rigls0001tr.pdf (accessed Dec. 9, 2016) (“FDA”).
12 Vermes, K., FDA Approves Carnexiv Injection as Short-Term
Replacement Treatment for Oral Carbamazepine,
http://www.pharmacytimes.com/product-news/fda-approves-camexiv-
injection-as-short-term-replacement-treatment-for-oral-carbamazepine (Oct.
20, 2016) (accessed Dec. 9, 2016) (“Vermes”).
9
Appeal 2014-007949
Application 13/547,866
twenty-one year gap (and a fourteen-year gap before the filing of the earliest
provisional application US 60/722,692 in this series on Sept. 30, 2005).
Therefore, we find the evidence supports Appellants’ position that the
secondary consideration of long-felt need is established and rebuts the
Examiner’sprima facie case.
Conclusion of Law
The evidence of record fails to support the Examiner’s conclusion that
the prior art render the claims obvious.
SUMMARY
In summary, we reverse the rejection of claims 1—4, 7, 8, 10-13, 16,
17, 24—29, 37, 38, 41, 45, 46, and 49-58 under 35 U.S.C. § 103(a) as
obvious Brewster, Stella, Thompson, Bodor, Becirevic-Lacan, and Ansel.
REVERSED
10
Notice of References Cited
Application/Control No.
13/547,866
Applicant(s)/Patent Under
Reexamination
James Cloyd et al.
Examiner
Anna Jiang
Art Unit
1600
Page 1 of 1
U.S. PATENT DOCUMENTS
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* DOCUMENT (Including Author, Title Date, Source, and Pertinent Pages)
DOCUMENT
SOURCE **
APS OTHER
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FDA, http://www.accessdata.fda.gov/drugsatfda_docs/appletter/
2016/2060300rigls0001tr.pdf (accessed Dec. 9, 2016). □ □
□ V
Vermes, K., FDA Approves Carnexiv Injection as Short-Term Replacement Treatment
for Oral Carbamazepine, http://www.pharmacytimes.com/product-news/fda-approves-
camexiv-injection-as-short-term-replacement-treatment-for-oral-carbamazepine (Oct. 20,
2016) (accessed Dec. 9, 2016).
□ □
□ w □ □
□ X □ □
*A copy of this reference is not being furnished with this Office action. (See Manual of Patent Examining Procedure, Section 707.05(a).)
**APS encompasses any electronic search i.e. text, image, and Commercial Databases.
U.S. Patent and Trademark Office
PTO-892 (Rev. 03-98Notice of References Cited Part of Paper No. 16
DEPARTMENT OF HEALTH AND HUMAN SERVICES
Food and Drug Administration
Silver Spring MD 20993
NDA 206030
Lundbeck LLC
Attention: Wendy Tian
Sr. Director, US Regulatory Affairs
Six Parkway North Suite 400
Deerfield, IL 60015
NDA APPROVAL
Dear Ms. Tian:
Please refer to your New Drug Application (NDA) dated December 20, 2013, received
December 23, 2013, and your amendments, submitted pursuant to section 505(b)(2) of the
Federal Food, Drug, and Cosmetic Act for CARNEXIV (carbamazepine) injection
200 mg/20 mL (10 mg/mL).
We acknowledge receipt of your amendment dated April 8, 2016, which constituted a complete
response to our October 23, 2014, action letter.
This new drug application provides for the use of CARNEXIV (carbamazepine) injection as
replacement therapy for oral carbamazepine formulations, when oral administration is
temporarily not feasible, in adults with the following seizure types:
• Partial seizures with complex symptomology
• Generalized clonic-tonic seizures
• Mixed seizure patterns which include the above or other partial or generalized seizures.
We have completed our review of this application, as amended. It is approved, effective on the
date of this letter, for use as recommended in the enclosed agreed-upon labeling text.
CARTON AND IMMEDIATE CONTAINER LABELS
Submit final printed carton and immediate container labels that are identical to the carton and
immediate container labels submitted on August 10, 2016, as soon as they are available, but no
more than 30 days after they are printed. Please submit these labels electronically according to
the guidance for industry Providing Regulatory Submissions in Electronic Format —Human
Pharmaceutical Product Applications and Related Submissions Using the eCTD Specifications
(June 2008). Alternatively, you may submit 12 paper copies, with 6 of the copies individually
mounted on heavy-weight paper or similar material. For administrative purposes, designate this
submission “Final Printed Carton and Container Labels for approved NDA 206030”
Approval of this submission by FDA is not required before the labeling is used.
Reference ID: 3996801
NDA 206030
Page 2
Marketing the product(s) with FPL that is not identical to the approved labeling text may render
the product misbranded and an unapproved new drug.
REQUIRED PEDIATRIC ASSESSMENTS
Under the Pediatric Research Equity Act (PREA) (21 U.S.C. 355c), all applications for new
active ingredients, new indications, new dosage forms, new dosing regimens, or new routes of
administration are required to contain an assessment of the safety and effectiveness of the
product for the claimed indication(s) in pediatric patients unless this requirement is waived,
deferred, or inapplicable.
Because this drug product for this indication has an orphan drug designation, you are exempt
from this requirement.
PROMOTIONAL MATERIALS
You may request advisory comments on proposed introductory advertising and promotional
labeling. To do so, submit, in triplicate, a cover letter requesting advisory comments, the
proposed materials in draft or mock-up form with annotated references, and the package insert,
Medication Guide, and patient PI (as applicable) to:
OPDP Regulatory Project Manager
Food and Drug Administration
Center for Drug Evaluation and Research
Office of Prescription Drug Promotion
5901-B Ammendale Road
Beltsville, MD 20705-1266
Alternatively, you may submit a request for advisory comments electronically in eCTD format.
For more information about submitting promotional materials in eCTD format, see the draft
Guidance for Industry (available at:
http://www.fda.g0v/downloads/Drues/GuidanceComplianceReeulatoryInfom1ation/Guidances/U
CM443 702'pdf')
As required under 21 CFR 314.81(b)(3)(i), you must submit final promotional materials, and the
package insert, at the time of initial dissemination or publication, accompanied by a Form FDA
2253. Form FDA 2253 is available at
http://www.fda.gov/dowiiloads/AboutFDA/ReportsManualsFonns/Eorms/UCMGS3570.pdf.
Information and Instructions for completing the form can be found at
http://www.fda.gov/downloads/AboutFDA/ReportsManualsForms/Forms/UCM375154.pdf. For
more information about submission of promotional materials to the Office of Prescription Drug
Promotion (OPDP), see http:/7www.fda.gov/AboutFDA/CentersQffices/CDER/ucm090142.htm.
Reference ID: 3996801
NDA 206030
Page 3
REPORTING REQUIREMENTS
We remind you that you must comply with reporting requirements for an approved NDA
(21 CFR 314.80 and 314.81).
If you have any questions, contact E. Andrew Papanastasiou, Regulatory Project Manager, by
email at emilios.papa.nastasiou@fda.hhs.gov or by phone at (301) 796-1930.
Sincerely,
Eric Bastings, MD
Deputy Director
Division of Neurology Products
Office of Drug Evaluation I
Center for Drug Evaluation and Research
Enclosure:
Content of Labeling
Reference ID: 3996801
This is a representation of an electronic record that was signed
electronically and this page is the manifestation of the electronic
signature.
Is/
ERIC P BASTINGS
10/07/2016
Reference ID: 3996801
FDA Approves Carnexiv Injection as Short-Term
| Replacement Treatment for Oral Carbamazepine
^ OCTOBER 20, 2016
ll Krystle Vermes
The FDA has approved Lundbeck’s Carnexiv, also known as carbamazepine, as a short-term (<7 days)
intravenous replacement treatment for adults with certain seizure types who cannot take the oral form of
carbamazepine. Carnexiv is the first intravenous formulation of carbamazepine, and it is expected to be
available in the United States in early 2017.
Patients who experience partial seizures with complex symptomatology, generalized tonic-clonic
seizures, or mixed seizure patterns, which may include the above, or other partial or generalized
seizures, may be treated with Carnexiv. Those who receive Carnexiv face an increased risk of serious
dermatologic reactions during treatment, such as toxic epidermal necrolysis and Stevens-Johnson
syndrome, as well as a risk of aplastic anemia and agranulocytosis.
“Carbamazepine has been an important treatment standard for people with epilepsy, but oral
administration isn't always possible, especially during hospitalizations or other circumstances where they
are temporarily unable to take medication by mouth,’’ said Peter Anastasiou, president of Lundbeck, in a
press release. “As part of Lundbeck’s ongoing commitment to the epilepsy community, we are proud to
offer Carnexiv to help meet the need for continuity of care for these patients.’’
When switching from oral carbamazepine, the total daily dose of Carnexiv should be 70% of the total
daily dose of oral carbamazepine. In addition, it should be divided equally into 4 separate 30-minute
infusions separated by 6 hours.
In Seniors: Consider CMV Serostatus
When Recommending Flu Vaccine
Older people who have cytomegalovirus seem
to have less robust responses to the trivalent
influenza vaccine than those who do not have
CMV.
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