DETAILED ACTION
This office action is in response to applicant’s filing dated February 18, 2026.
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 .
Status of Claims
Claims 1-21 are pending in the instant application. Acknowledgement is made of Applicant's remarks and amendments filed February 18, 2026. Acknowledgement is made of Applicant's addition of new claims 17-21.
Applicants elected with traverse 17-deoxy-o-Bz-RvE2:
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in the reply filed on July 25, 2025. The requirement is still deemed proper.
The elected compound 17-deoxy-o-Bz-RvE2 was found free of prior art and Examination was expanded to encompass o-BZ-Rv-E2 in the Office Action dated October 30, 2025. The expanded compound o-BZ-Rv-E2 has been found free of the prior art. Examination has been expanded to encompass a Compound of General Formula (1) wherein R1 and R2 are hydrogen; m is 0; n is 1; and R3 is an alkyl group having 5 carbons.
Claims 4, 5, and 7-10 remain withdrawn.
New claims 17-21 are directed to expanded Compound of General Formula (1) wherein R1 and R2 are hydrogen; m is 0; n is 1; and R3 is an alkyl group having 5 carbons and thus are presently under examination.
Claims 1-3, 6, and 11-21 are presently under examination.
Response to Arguments
Applicant argues:
Applicant Declaration Pursuant to 37 C.F.R. 1.130 in support of the traversal, arguing that Murakami is not prior art under 35 U.S.C. § 102. The Office states that the second page of the declaration filed on July 25, 2025 is unreadable, and "[t]hus the declaration is not proper and thus not found persuasive." Filed herewith is a Declaration Pursuant to 37 C.F.R. 1.130 for inventor Satoshi Shuto, whose signature page was "unreadable." Applicant requests that the Office utilize the prior filed Declaration for Inventors Hayato Fukuda, Ryuta Muromoto, and Tadashi Matsuda, as Applicant believes those pages (i.e., pages 3-5) were legible.
Withdrawal of the Restriction Requirement is respectfully requested.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
As set forth previously on the record, the species lack unity of invention because even though the inventions of these species require the technical feature of a compound having the core structure of Formula (1) or (1’), this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of the 103 rejection set forth below.
Priority
The present application is a 371 of PCT/JP2021/006102 filed on February 18, 2021, which claims benefit of foreign priority to JAPAN 2020-025666 filed on February 18, 2020.
Objections and/or Rejections and Response to Arguments
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated (Maintained Objections and/or Rejections) or newly applied (New Objections and/or Rejections, Necessitated by Amendment or New Objections and/or Rejections, NOT Necessitated by Amendment). They constitute the complete set presently being applied to the instant application.
Withdrawn Objections and/or Rejections
Claim Rejections - 35 USC § 102
The rejection of claims 1-3, 6, and 11-13 under 35 U.S.C. 102(a)(1) as being anticipated by Murakmi et al (Abstract of the 139th Annual Meeting of the Pharmaceutical Society of Japan, March 5, 2019, cited in the IDS filed August 16, 2022) has been rendered moot in view of the affidavit which disqualifies Murakmi as prior art under 102(a)(1) and the certified the translation of the foreign priority application filed on February 18, 2026. Thus the rejection has been withdrawn.
Modified Objections and/or Rejections
Modifications Necessitated by Claim Amendment
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 6, and 11-18 are rejected under 35 U.S.C. 103 as being unpatentable over Buckle et al (EP 0 207 599).
Regarding claims 1, 2, 6, 17, and 18, Buckle teaches arachidonic acid analogues (title); a compound of formula (I):
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wherein X and X’ are a double bond; R1 is hydrogen; R2 is hydrogen; n is 1 to 4; and m is 2 (claim 1). Buckle teaches a compound of formula (I) is 6-[2-(Z-1-octenyl)phenyl]-E-hex-5-en-1-oic acid:
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Thus, Buckle teaches the compounds wherein the chains are in the ortho position of the benzene ring. Buckle further teaches the disclosed compounds are useful as an anti-inflammatory agent for the treatment of rheumatoid arthritis (page 25, 3rd paragraph). The compound taught by Buckle differs from the instantly claimed compounds in that the double bond denoted by the arrow labeled A is in the position denoted by the arrow labeled B in instant formula (1).
MPEP 2144.09 states: A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). In the instant case, the compound of the prior art differs in the placement of a double bond and thus is considered to be generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to arrive at the compound of the instant claims wherein R1 and R2 are hydrogen; m is 0; n is 1; and R3 is an alkyl group having 5 carbons, with a reasonable expectation of success. The skilled artisan would have been motivated to formulate additional arachidonic acid analog compounds useful as anti-inflammatory agents for the treatment of rheumatoid arthritis.
Regarding claims 11-13, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention's limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See Ptiney Bowes Inc. v. Hewlett-Packard Co., 182 F.2d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 378, 42 USPQ2d 1550, 1554 and MPEP 2112.02(II). In the instant case, the claims are directed to a neutrophil infiltration suppressor (instant claim 11), an anti-inflammatory agent (instant claim 12), and an antidepressant (instant claim 12) comprising the compound of formula (1). The compound that would result from the teachings of Buckle would be reasonably expected to be capable of performing the intended use as instantly claimed, absent factual evidence to the contrary and further absent any apparent structural difference between the composition of the prior art and that of the instant claims.
Regarding claim 14, Buckle teaches the compounds of the invention may be administered alone or as a pharmaceutical composition also comprising a pharmaceutically acceptable carrier (page 23, 1st paragraph).
Regarding claims 15 and 16, the wherein limitations of these claims are directed to an
intended use of the composition, for treating inflammation (instant claim 15) and for treating depression (instant claim 16). Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. In the instant case, the intended use for treating inflammation and/or depression does not limit the claim to a particular structure.
Taken together, all this would result in the composition of claims 1, 2, 6, and 11-18 with a reasonable expectation of success.
Response to Arguments
Applicant argues:
The position of the double bond results in different properties. In the compound of the prior art, the double bonds are conjugated and the electrons are delocalized and exhibits high reactivity and thermodynamic stability. While the compound of the instant claims, the double bond is formed at a position away from the double bond of the benzene ring, so the double bond is not conjugated and the electrons are not delocalized. Moreover, the compound of the prior art has no steric freedom, and the benzene ring and the double bond are coplanar. While the compound of the instant claims, the benzene ring is adjacent to a rotatable sp3 carbon (CH2), so there is steric freedom at this location. Since the compound of Buckle and the compound of the present application have significantly different properties, it is easy to infer that their anti-inflammatory effects are also different.
The differing properties of the compound of Buckle and the compound of the present application are further reflected in the technical problems described in Buckle and the present application. In particular, Buckle is directed to "novel arachidonic acid analogues" intended to inhibit phospholipase A2 (PLA2), based on the concept that arachidonic acid metabolites such as prostaglandins, thromboxanes, and leukotrienes are involved in inflammatory and allergic diseases such as rheumatoid arthritis and asthma. As such, Buckle describes a class of PLA2 inhibitors. In contrast, the present application is directed to compounds that are designed as stable bioisostere/stable equivalents of RvE2 (Resolvin E2, a specific polyunsaturated lipid mediator). Instead of suppressing the production of inflammatory mediators like Buckle, the present claims are directed to a compound that mimics and stabilizes RvE2, a lipid mediator involved in the resolution or control of inflammation. Accordingly, the compounds work via very different mechanisms of action. As such, there is simply no reasonable expectation of success based on the teachings of Buckle that modifying the compound of Buckle as asserted by the Office would provide a compound suitable to mimic and stabilize RvE2, as described in the present application.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
MPEP 716.01(c) states:
Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) ("It is well settled that unexpected results must be established by factual evidence." In the instant case, Applicant has not provided sufficient evidence to support that the alleged differences in placement of the double bond resulted in differences in efficacy of the compounds. Thus, the arguments are not sufficient to overcome the prima facie case of obviousness set forth on the record.
In response to applicant's argument that the prior art compounds function as PLA2 inhibitors, while the instant claims function as equivalents of RvE2, as set forth above, Buckle teaches 6-[2-(Z-1-octenyl)phenyl]-E-hex-5-en-1-oic acid; useful as an anti-inflammatory agent for the treatment of rheumatoid arthritis (page 25, 3rd paragraph). The compound taught by Buckle differs from the instantly claimed compounds in that the double bond denoted by the arrow labeled A is in the position denoted by the arrow labeled B in instant formula (1).
MPEP 2144.09 states: A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). In the instant case, the compound of the prior art differs in the placement of a double bond and thus is considered to be generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to arrive at the compound of the instant claims wherein R1 and R2 are hydrogen; m is 0; n is 1; and R3 is an alkyl group having 5 carbons, with a reasonable expectation of success. The skilled artisan would have been motivated to formulate additional arachidonic acid analog compounds useful as anti-inflammatory agents for the treatment of rheumatoid arthritis. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
New Objections and/or Rejections
Necessitated by Claim Amendment
Claim Objections
Claims 3 and 19-21 are 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.
Conclusion
Claims 1, 2, 6, and 11-18 are rejected.
Claims 3 and 19-21 are objected.
No claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYNA B RODRIGUEZ whose telephone number is (571)272-7088. The examiner can normally be reached 8am-5:00pm, Monday - Thursday.
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, Amy L Clark can be reached at 571-272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Rayna Rodriguez/ Primary Examiner, Art Unit 1628
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