Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This is a response to Applicant’s communication filed on March 10, 2026. Application No. 17/424,055, is a 371 of PCT/US20/14819, filed January 23, 2020, and claims the benefit of U.S. Provisional application No. 62/796,002, filed January 23, 2019. In a preliminary amendment filed March 21, 2022, Applicant cancelled claims 19-21 and 24-26. In an amendment filed January 27, 2025, Applicant cancelled claims 2-7, 9-13, 16-18, and 23. In an amendment filed August 20, 2025, Applicant cancelled claims 14 and 15. In an amendment filed March 10, 2026, Applicant’s added new claims 27-29. Claims 1, 8, and 27-29 are pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 20, 2025, has been entered.
Rejection Maintained
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The rejection of claims 1, 8 and new claims 28, and 29 under 35 U.S.C. 112(a) as failing to comply with the enablement requirement, is maintained for reasons made of record. Applicant argues that the specification as filed discloses specific allosteric PDE4 inhibitors selective for PDE4B, such as, the 2-arylpyrimidine derivative compound A-33 (as described in Hagan et al. (2014) Bioorg Med Chem Lett. 24(16):4031-4 and Fox et al. (2014) Cell Signal. 26(3):657-63) - see Fig. 5 of Fox et al., 2014) and the triazine compounds described in Hagan et al. (supra).” (March 10, 2026, Remarks, p. 4, emphasis added.) Applicant’s argument has been fully considered and is not persuasive.
The claims are drawn to a method of treating epilepsy by administering a small molecule allosteric phosphodiesterase (PDE4B inhibitor) generally. By applicant’s own admission the specification only discloses a single compound as a selective PDE4B inhibitors, Compound A-33. The only other triazine compound disclosed in Hagan et al., is A-33. There is no correlation between the disclosure of the present invention/the prior art, and selective PDE4B inhibition with any other PDE4B inhibitor other than A-33, and the method of treating epilepsy as presently claimed. Accordingly, it would require undo experimentation for the ordinary artisan to practice the claimed invention.
Conclusion
Claims 1, 8, 28 and 29 are not allowed.
Claim 27 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
THIS ACTION IS MADE FINAL. 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY R ROZOF whose telephone number is (571)270-5992. The examiner can normally be reached Monday - Friday, 9:00 a.m. -5:00 p.m..
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 supervisor, Andrew Kosar can be reached on (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY R ROZOF/ Primary Examiner, Art Unit 1625
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