Prosecution Insights
Last updated: April 19, 2026
Application No. 13/895,089

NOVEL BICYCLIC HETEROCYCLIC COMPOUND

Final Rejection §103§DP
Filed
May 15, 2013
Examiner
STOCKTON, LAURA LYNNE
Art Unit
1626
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Sumitomo Pharma Co., Ltd.
OA Round
16 (Final)
75%
Grant Probability
Favorable
17-18
OA Rounds
2y 6m
To Grant
99%
With Interview

Examiner Intelligence

Grants 75% — above average
75%
Career Allow Rate
1009 granted / 1342 resolved
+15.2% vs TC avg
Strong +34% interview lift
Without
With
+33.7%
Interview Lift
resolved cases with interview
Typical timeline
2y 6m
Avg Prosecution
26 currently pending
Career history
1368
Total Applications
across all art units

Statute-Specific Performance

§101
1.2%
-38.8% vs TC avg
§103
21.1%
-18.9% vs TC avg
§102
22.1%
-17.9% vs TC avg
§112
34.6%
-5.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1342 resolved cases

Office Action

§103 §DP
Notice of Pre-AIA or AIA Status The present application is being examined under the pre-AIA first to invent provisions. DETAILED ACTION Claims 1-19 are pending in the instant application. Continued Examination Under 37 CFR 1.114 A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on September 29, 2025 has been entered. Double Patenting The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. Claims 1, 2, 4-10, 12, 14 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,925,621 {which matured from Application No. 17/260,123 (US 2021/0322385), cited in a previous Office Action}. Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent No. 11,925,621 claims products which are useful for treating pain (claim 10 in U.S. Patent No. 11,925,621) and these claimed products in U.S. Patent No. 11,925,621 are the products found in the present claimed method. See the compound in instant claim 17 which is the same compound in claim 1 of U.S. Patent No. 11,925,621. U.S. Patent No. 11,925,621 discloses in the specification that the bicyclic heterocyclic compound has an analgesic effect and inhibits a sensory neuron-specific Na channel (SNS) in a peripheral nerve. See lines 47-51 in column 1 of the specification in U.S. Patent No. 11,925,621. The instant application and U.S. Patent No. 11,925,621 share the same assignee (i.e., Sumitomo Dainippon Pharma Co., Ltd.). Further, the instant application is not related to U.S. Patent No. 11,925,621 and thus, no 35 USC 121 shield exists here. See MPEP 804.01. Therefore, the claims in U.S. Patent No. 11,925,621 anticipate and/or render obvious the instant claimed invention. Response to Arguments Applicant's arguments filed September 29, 2025 have been fully considered. Applicant argues that the claimed invention is directed to inhibiting sensory neuron specific sodium channel (SNS) in a patient by administering an effective amount of a compound of formula (1). Since the claims in U.S. Patent No. 11,925,621 are completely silent as to the inhibition of sensory neuron specific sodium channel (SNS), Applicant argues that the claimed method is unobvious over the claims in U.S. Patent No. 11,925,621. In response, the claims in U.S. Patent No. 11,925,621 do not refer to any biological mechanisms associated with treating pain. However, the specification in the U.S. Patent No. 11,925,621 discloses that the compound in the patented composition and method claims possess SNS inhibitory activity. See lines 47-51 in column 1 of the specification in U.S. Patent No. 11,925,621. The instant claimed invention is directed to the mode of action in that the instant claims are directed to inhibiting SNS in a patient by administering an effective amount of a compound of formula (1). The claims in U.S. Patent No. 11,925,621 are directed to a pharmaceutical composition comprising a compound that anticipates a compound of instant formula (I). See claims 1 and 7 of U.S. Patent No. 11,925,621 (reproduced below). PNG media_image1.png 108 466 media_image1.png Greyscale PNG media_image2.png 46 462 media_image2.png Greyscale U.S. Patent No. 11,925,621 also claims a method of treating or preventing pain by administering a compound that anticipates a compound of instant formula (I). See claims 10 and 11 in U.S. Patent No. 11,925,621 (reproduced below). PNG media_image3.png 106 466 media_image3.png Greyscale The anticipatory compound in the claims of U.S. Patent No. 11,925,621 is the same compound found in instant claim 17 (reproduced below). PNG media_image4.png 80 590 media_image4.png Greyscale The claims in U.S. Patent No. 11,925,621 are directed to pharmaceutical compositions comprising SNS inhibiting compounds and methods for treating a patient suffering from pain by administering an effective amount of a compound of instant formula (1). However, the same patient is being administered the same compound to treat the same ailment (i.e., pain). A compound and its properties are inseparable. In re Papesch, 137 USPQ 43 (CCPA 1963). See MPEP 2112.01(I) and (II). See also the decision in Sun Pharmaceutical Industries, Ltd. v. Eli Lilly & Co., 617 F.3d 1381, 95 USPQ2d 1797 at 1802 (Fed. Cir. 2010). Therefore, Applicant’s arguments are not persuasive. Claims 1-19 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-40 of U.S. Patent No. 8,471,038 {“the ‘038 patent”}. Although the conflicting claims are not identical, they are not patentably distinct from each other because the patent claims specie which anticipate the instant claimed invention. See, for instance, the compound found in claims 28 and 40 of the patent which is the same compound found in instant claim 19. The patent claims anticipatory compounds of formula (1), pharmaceutical compositions comprising the anticipatory compounds of formula (1) and methods for treating by administering anticipatory compounds of formula (1). The instant claimed invention is directed to a method of inhibiting sensory neuron specific sodium channel (SNS) in a patient by administering an effective amount of a compound of formula (1), which is a mode of action, whereas the claims in the ‘038 patent are directed to the end result of treating a patient suffering from pain by administering an effective amount of the same compounds of formula (1). However, the same patient is being administered the same compound to treat the same ailment such as pain. A compound and its properties are inseparable. In re Papesch, 137 USPQ 43 (CCPA 1963). Further, the ‘038 patent discloses in the specification, but does not claim, that the patented compounds possess SNS inhibiting activity (column 7, lines 16-22 and 26-35). PNG media_image5.png 206 488 media_image5.png Greyscale The first paragraph of the patent in column 1, lines 5-14, states: PNG media_image6.png 249 493 media_image6.png Greyscale With regard to obviousness-type double patenting of a method claim over a patented composition, the Federal Circuit, in Sun v. Lilly, recounts its own decisions in Geneva and Pfizer, In both cases, we found claims of a later patent invalid for obviousness-type double patenting where an earlier patent claimed a compound, disclosing its utility in the specification, and a later patent claimed a method of using the compound for a use described in the specification of the earlier patent. Sun Pharmaceutical Industries Ltd. v. Eli Lilly and Co., 95 USPQ2d 1797 at 1800 (Fed. Cir. 2010). In reaffirming its holding in Geneva and Pfizer, the Court finds that a "claim to a method of using a composition is not patentably distinct from an earlier claim to the identical composition in a patent disclosing the identical use.” (Id. at 1801, quoting Pfizer, 518 F.3d at 1363; Geneva, 349 F.3d at 1385-86. The Court reasserts this notion by stating, [i]t would shock one's sense of justice if an inventor could receive a patent upon a composition of matter, setting out at length in the specification the useful purposes of such composition, . . .and then prevent the public from making any beneficial use of such product by securing patents upon each of the uses to which it may be adapted. Pfizer, 518 F.3d at 1363 n.8 (emphases added); Geneva, 349 F.3d at 1386 (quoting In re Byck, 48 F.2d 665, 666 [9 USPQ 205] (CCPA 1931)). Sun Pharmaceutical Industries Ltd. v. Eli Lilly and Co., 95 USPQ2d 1797 at 1802 (Fed. Cir. 2010). Pfizer, 518 F3d 1353 at 1363 (Fed. Cir. 2008). Geneva, 349 F3d at 1386 (Fed. Cir. 2003). One skilled in the art would thus be motivated to prepare products embraced by the ‘038 patent to arrive at the instant products with the expectation of obtaining additional beneficial products would possess SNS inhibiting activity and would be useful in treating, for example, pain. The instant claimed invention would have been suggested to one skilled in the art and therefore, the instant claimed invention would have been obvious to one skilled in the art. The instant application is a continuation of Application Number 13/141,301, which matured to U.S. Patent No. 8,471,038. See Box 21 on the Transmittal Sheet filed May 15, 2013 in the instant application. Both the ‘038 patent and the instant application share the same assignee {i.e., Dainippon Sumitomo Pharma Co. Ltd} and share the same inventive entity. A restriction requirement was not required during the prosecution parent Application Number 13/141,301. The compounds of formula (1), the pharmaceutical compositions comprising the compounds of formula (1) and the methods of using the compounds of formula (1) were all examined in parent Application Number 13/141,301. Thus, no 35 USC 121 shield exists here. See MPEP 804.01, especially the following: The following are situations where the prohibition against nonstatutory double patenting rejections under 35 U.S.C. 121 does not apply: (A) The applicant voluntarily files two or more applications without a restriction requirement by the examiner. In order to obtain the benefit of 35 U.S.C. 121, claims must be formally entered, restricted in, and removed from an earlier application before they are filed in a divisional application . Geneva Pharms. Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1379, 68 USPQ2d 1865, 1870 (Fed. Cir. 2003) (For claims that were not in the original application and are first formally entered in a later divisional application, 35 U.S.C. 121 "does not suggest that the original application merely needs to provide some support for claims that are first entered formally in the later divisional application." Id.); In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). The instant claims are not patentably distinct from the claims in the ‘038 patent. Therefore, the claims in the ‘038 patent anticipate and/or would render obvious the instant claims. Response to Arguments Applicant's arguments filed September 29, 2025 have been fully considered. Applicant continues to argue that the Federal Circuit’s decision in Sun Pharmaceutical Industries is inconsistent with precedent, which holds that the specification of the patent upon which an obviousness-type double patenting rejection is based is not to be considered in the double patenting analysis. Applicant’s arguments filed September 29, 2025 and all previously presented arguments have been considered by the Examiner but have not been found persuasive. All of the Examiner’s previous responses are incorporated herein. None of the cases cited by Applicant in the past Remarks filed are inconsistent with the Sun Pharmaceutical Industries case {or MPEP § 804(II)(B)(1)}. See MPEP §804(II)(B)(1), reproduced in-part below. 1. Construing the Claim Using the Reference Patent or Application Disclosure When considering whether the invention defined in a claim of an application would have been anticipated by or is an obvious variation of the invention defined in the claim of a patent or copending application, no part of the reference patent or application may be used as if it were prior art. General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 1281, 23 USPQ2d 1839, 1846 (Fed. Cir. 1992) ("Our precedent makes clear that the disclosure of a patent cited in support of a double patenting rejection cannot be used as though it were prior art, even where the disclosure is found in the claims"). This does not mean that one is precluded from all use of the reference patent or application disclosure to understand the meaning of the reference claims. The specification can be used as a dictionary to learn the meaning of a term in the claim. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999) ("[W]ords in patent claims are given their ordinary meaning in the usage of the field of the invention, unless the text of the patent makes clear that a word was used with a special meaning."); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998) ("Where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meanings."). "The Patent and Trademark Office (‘PTO’) determines the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’ " Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); see also MPEP § 2111.01. Further, those portions of the specification which provide support for the reference claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application (as distinguished from an obvious variation of the subject matter disclosed in the reference patent or application). In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970). The court in Vogel recognized "that it is most difficult, if not meaningless, to try to say what is or is not an obvious variation of a claim," but that one can judge whether or not the invention claimed in an application is an obvious variation of an embodiment disclosed in the patent or application which provides support for the claim. According to the court, one must first "determine how much of the patent disclosure pertains to the invention claimed in the patent" because only "[t]his portion of the specification supports the patent claims and may be considered." The court pointed out that "this use of the disclosure is not in contravention of the cases forbidding its use as prior art, nor is it applying the patent as a reference under 35 U.S.C. 103, since only the disclosure of the invention claimed in the patent may be examined." In AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014), the court explained that it is also proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co., 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010); Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008); Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003). To avoid improperly treating what is disclosed in a reference patent or copending application as if it were prior art in the context of a nonstatutory double patenting analysis, the examiner must first properly construe the scope of the reference claims. The portion of the specification of the reference that describes subject matter that falls within the scope of a reference claim may be relied upon to properly construe the scope of that claim. In particular, when ascertaining the scope of the reference’s claim(s) to a compound, the examiner should consider the reference’s specification, including all of the compound’s uses that are disclosed. See Sun Pharm. Indus., 611 F.3d at 1386-88, 95 USPQ2d at 1801-02. If claims to the compound’s use and the compound were subject to a restriction requirement, and the compound was elected, a nonstatutory double patenting rejection may not be appropriate in a divisional application claiming the restricted compound’s use. See MPEP § 804.01. However, subject matter disclosed in the reference patent or application that does not fall within the scope of a reference claim cannot be used to support a nonstatutory double patenting rejection as this would effectively be treating the reference patent or application as prior art. Properly construing the reference claims does not complete the nonstatutory double patenting analysis. It merely provides a determination as to how the earlier issued claim should be understood in making a nonstatutory double patenting rejection. To do a full analysis to determine whether a nonstatutory double patenting rejection should be made, one must go through the "anticipation analysis" and "obviousness analysis" noted below, and consider the "nonstatutory double patenting rejection based on equitable principles" discussed in subsection II.B.6 below. In construing the claims of the reference patent or application, a determination is made as to whether a portion of the specification, including the drawings and claims, is directed to subject matter that is within the scope of a reference claim. For example, assume that the claim in a reference patent is directed to a genus of compounds, and the application being examined is directed to a species within the reference patent genus. If the reference patent discloses several species within the scope of the reference genus claim, that portion of the disclosure should be analyzed to properly construe the reference patent claim and determine whether it anticipates or renders obvious the claim in the application being examined. Because that portion of the disclosure of the reference patent is an embodiment of the reference patent claim, it may be helpful in determining the full scope and obvious variations of the reference patent claim. As an alternative example, assume that the claim in the reference patent is directed to a genus of compounds, and the application being examined is directed to a method of making compounds within the genus. Further assume that the reference patent discloses a nearly identical method of making compounds within the genus. Here, the disclosed method of making the compounds in the reference patent does not fall within the scope of the genus of compounds claimed in the reference. Thus, the reference disclosure directed to the method of making the compounds cannot be used to construe the claim to the genus of compounds in the context of a nonstatutory double patenting analysis. This would effectively result in treating the reference as prior art. Nevertheless, there may be cases in which permitting claims to a method of making a compound could essentially result in an unjustified timewise extension of the period of exclusivity for the compound itself. In such cases, the "Nonstatutory Double Patenting Rejection Based on Equitable Principles" discussed in paragraph II.B.6 below should be considered. Cf. Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003) (rejecting claims to methods of use over claims to compound based on unjustified timewise extension rationale). As acknowledged in previous Office Actions, the claims of the '038 patent do not refer to any biological mechanisms associated with treating the recited diseases, which are associated with a variety of biological mechanisms. However, the specification in the '038 patent discloses that the compounds being claimed in the patented claims possess SNS inhibitory activity. As stated above and in previous Office Actions, the instant claimed invention is directed to the mode of action of the previously patented compounds {i.e., inhibiting SNS in a patient by administering an effective amount of a compound of formula (1)} whereas the claims in the '038 patent are directed to SNS inhibiting compounds, pharmaceutical compositions comprising SNS inhibiting compounds and methods for treating a patient suffering from, for instance, neuropathic pain by administering an effective amount of the same compounds of formula (1). However, the same patient is being administered the same compound to treat the same ailment such as pain. Further, the instant claimed invention was previously disclosed in the '038 patent, but not claimed. Again, see the decision in Sun Pharmaceutical Industries v. Eli Lilly and Co. The instant claims are not patentably distinct from the claims in the '038 patent. Additionally, in Eli Lilly & Co. v. Barr Laboratories Inc., 55 USPQ2d 1609 (Fed. Cir. 2000), the Court compared the claimed subject matter in claim 1 of US Patent 4,018,895 ("the '895 patent") with the claimed subject matter in claims 4 and 7 in US Patent 4,626,549 ("the '549 patent"), both belonging to Eli Lilly and Company. The Court stated, "The only discernible difference between claim 1 of the '895 patent and claim 7 of the '549 patent is that the former addresses the treatment of depression in humans while the latter addresses the treatment of serotonin uptake in animals. Humans are a species of the animal genus, and depression is a species ailment of the genus of ailments caused by defective serotonin uptake." (page 1619). The Court in Eli Lilly & Co. v. Barr Laboratories Inc. decided that "Claim of patent for method of administering fluoxetine hydrochloride to inhibit serotonin uptake covers subject matter previously claimed in expired patent, pertaining to method of treating depression in humans by administering compound within certain class of compounds, since claim at issue depends from independent claim for method of blocking uptake of monoamines by administering compound found within same class of compounds that is defined in claim of expired patent, since fluoxetine hydrochloride, covered in claim at issue, is also one compound encompassed by claim of expired patent, and since it necessarily follows that claim of expired patent covered administration of fluoxetine hydrochloride to treat depression." In the instant case, the only discernible difference between claims 16, 17 and 29-40 of the '038 patent and the instant claimed invention is that the former addresses the treatment of, for instance, neuropathic pain in a patient while the latter addresses inhibiting SNS in a patient. However, neuropathic pain is a species ailment of the genus of ailments in which SNS is involved. The instant claims are not patentably distinct from the claims in the '038 patent. For all the reasons given above and in all of the previous Office Actions, which are incorporated herein, the rejection is deemed proper and therefore, the rejection is maintained. The RCE filed September 29, 2025 makes the 12th RCE filed in the instant application. The nonstatutory obviousness-type double patenting rejection of the instant claims being unpatentable over claims 1-40 of U.S. Patent No. 8,471,038 has been made since the very first Office Action of October 2, 2013. After over 12 years, it does not appear that Applicant and the Examiner will agree on this rejection. To advance prosecution, Applicant is encouraged to file either timely Terminal Disclaimers, a Pre-Appeal Brief Review Request or a Notice of Appeal followed by a Brief. Conclusion All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Telephone Inquiry Any inquiry concerning this communication or earlier communications from the examiner should be directed to: Laura L. Stockton (571) 272-0710. The examiner can normally be reached on Monday-Friday from 8:30 am to 6 pm, Eastern Standard Time. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s acting supervisor, James Alstrum-Acevedo can be reached on 571/272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /LAURA L STOCKTON/ Primary Examiner, Art Unit 1626 Work Group 1620 Technology Center 1600 January 13, 2026 Book XIX, page 43
Read full office action

Prosecution Timeline

May 15, 2013
Application Filed
May 15, 2013
Response after Non-Final Action
Sep 27, 2013
Non-Final Rejection — §103, §DP
Apr 02, 2014
Response Filed
Apr 24, 2014
Final Rejection — §103, §DP
Oct 30, 2014
Notice of Allowance
Jun 01, 2015
Request for Continued Examination
Jun 08, 2015
Final Rejection — §103, §DP
Jun 08, 2015
Response after Non-Final Action
Dec 11, 2015
Notice of Allowance
Jul 11, 2016
Response after Non-Final Action
Jul 11, 2016
Request for Continued Examination
Jul 14, 2016
Non-Final Rejection — §103, §DP
Dec 20, 2016
Response Filed
Jan 10, 2017
Final Rejection — §103, §DP
Jun 19, 2017
Notice of Allowance
Oct 19, 2017
Request for Continued Examination
Oct 20, 2017
Response after Non-Final Action
Oct 23, 2017
Final Rejection — §103, §DP
Mar 27, 2018
Notice of Allowance
Jul 27, 2018
Request for Continued Examination
Jul 31, 2018
Response after Non-Final Action
Aug 02, 2018
Final Rejection — §103, §DP
Jan 07, 2019
Notice of Allowance
May 07, 2019
Request for Continued Examination
May 08, 2019
Response after Non-Final Action
May 27, 2019
Final Rejection — §103, §DP
Oct 30, 2019
Notice of Allowance
Mar 02, 2020
Request for Continued Examination
Mar 02, 2020
Response after Non-Final Action
Mar 26, 2020
Final Rejection — §103, §DP
Aug 31, 2020
Notice of Allowance
Dec 31, 2020
Request for Continued Examination
Jan 11, 2021
Response after Non-Final Action
Jan 15, 2021
Final Rejection — §103, §DP
Jun 22, 2021
Notice of Allowance
Oct 22, 2021
Request for Continued Examination
Oct 27, 2021
Response after Non-Final Action
Nov 05, 2021
Final Rejection — §103, §DP
Apr 11, 2022
Notice of Allowance
Aug 11, 2022
Request for Continued Examination
Aug 12, 2022
Response after Non-Final Action
Sep 02, 2022
Non-Final Rejection — §103, §DP
Feb 09, 2023
Response Filed
Apr 07, 2023
Final Rejection — §103, §DP
Sep 12, 2023
Notice of Allowance
Jan 12, 2024
Request for Continued Examination
Jan 16, 2024
Response after Non-Final Action
Feb 07, 2024
Final Rejection — §103, §DP
Jul 15, 2024
Notice of Allowance
Nov 15, 2024
Request for Continued Examination
Nov 19, 2024
Response after Non-Final Action
Dec 19, 2024
Final Rejection — §103, §DP
May 27, 2025
Notice of Allowance
Sep 29, 2025
Request for Continued Examination
Oct 06, 2025
Response after Non-Final Action
Oct 17, 2025
Response after Non-Final Action
Jan 13, 2026
Final Rejection — §103, §DP (current)

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ORGANIC COMPOUND AND SENSOR AND SENSOR EMBEDDED DISPLAY PANEL AND ELECTRONIC DEVICE
2y 5m to grant Granted Mar 17, 2026
Patent 12577234
ANTAGONISTS OF THE MUSCARINIC ACETYLCHOLINE RECEPTOR M4
2y 5m to grant Granted Mar 17, 2026
Patent 12566173
HEMOLYTIC REAGENT, REAGENT KIT, AND METHOD FOR CLASSIFYING WHITE BLOOD CELLS
2y 5m to grant Granted Mar 03, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

17-18
Expected OA Rounds
75%
Grant Probability
99%
With Interview (+33.7%)
2y 6m
Median Time to Grant
High
PTA Risk
Based on 1342 resolved cases by this examiner. Grant probability derived from career allow rate.

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