Prosecution Insights
Last updated: April 19, 2026
Application No. 18/250,457

PROCESS FOR PURIFYING NOROXYMORPHONE

Non-Final OA §102§103
Filed
Apr 25, 2023
Examiner
AULAKH, CHARANJIT
Art Unit
1621
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Rhodes Technologies
OA Round
1 (Non-Final)
81%
Grant Probability
Favorable
1-2
OA Rounds
2y 3m
To Grant
65%
With Interview

Examiner Intelligence

Grants 81% — above average
81%
Career Allow Rate
1407 granted / 1741 resolved
+20.8% vs TC avg
Minimal -16% lift
Without
With
+-16.0%
Interview Lift
resolved cases with interview
Typical timeline
2y 3m
Avg Prosecution
54 currently pending
Career history
1795
Total Applications
across all art units

Statute-Specific Performance

§101
1.9%
-38.1% vs TC avg
§103
15.2%
-24.8% vs TC avg
§102
21.0%
-19.0% vs TC avg
§112
42.6%
+2.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1741 resolved cases

Office Action

§102 §103
DETAILED ACTION 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. According to paper filed on Nov. 19, 2025, the applicants have elected group IV, claims 41-44 and 50-54. Claims 1, 6, 14, 25, 29, 34-36, 38-39, 41-44 and 50-54 are pending in the application. Claims 1, 6, 14, 25, 29, 34-36 and 38-39 are withdrawn from further consideration as being drawn to non-elected inventions. Response to Arguments Applicant's arguments filed on Nov. 19, 2025 regarding restriction requirement have been fully considered but they are not persuasive. The examiner does not agree with the applicant’s arguments that all groups have a common core and therefore, have unity. As stated clearly in the restriction requirement, groups I through IV relate to unrelated inventions, do not share a common core and therefore, do lack unity. Therefore, restriction requirement is proper and thereby made final. Claim Rejections - 35 USC § 102 (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale , or otherwise available to the public before the effective filing date of the claimed invention. Claim 50 is rejected under 35 U.S.C. 102 (a) (1) as being anticipated by McCarthy (WO 2016/0059 23 A1, cited on applicant’s form 1449) . McCarthy discloses reduction of alpha, beta-unsaturated ketone levels in morphinan derivative compositions. Pure noroxymorphone disclosed on pages 133-134 by McCarthy anticipates the instant claim. It is of note that the instant claim is product by process claim. Therefore, the process is irrelevant Claim Rejections - 35 USC § 103 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. 7. 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. 8 . Claim s 41, 42 , 44 and 50 are rejected under 35 U.S.C. 103 as being unpatentable over Buehler ( US 2018/00 0 8596 A1, cited on applicant’s form 1449) . Buehler discloses a process for preparing morphinan-6one products with low levels of impurity. The process of preparing pure noroxymorphone (see scheme 5 on page 5) via formation of bisulfite adduct using sulfurous acid (see scheme 12 A and 12 B on page 10, lines 6-18 in left column on page 10 as well as examples 2A and 2B on page 16) meets all the limitations of instant claims except that the instant process mentions colored impurities instead of alp h a, beta unsaturated ketones as impurity . However, the instant specification does not define colored impurities. Since all the steps in the instant process and the cited reference are identical, it would have been obvious to one skilled in the art to remove colored impurities also in order to prepare pure noroxymorphone with reasonable expectations of success. Regarding claim 50, an improved colorime tric profile will be inherently present in the pure noroxymorphone. 9 . Claims 41, 4 3 and 51-52 are rejected under 35 U.S.C. 103 as being unpatentable over McCarthy (WO 2016/ 005923 A1, cited on applicant’s form 1449) in view of Buehler ( US 2018/00 0 8596 A1, cited on applicant’s form 1449). McCarthy discloses preparing noroxymorphone from oxymorphone by demethylation and further teaches preparing naloxone and naltrexone form noroxymorphone (see schemes 1 and 2 on page 2) . McCarthy meets all the limitations of instant claims except that it does not teach preparing pure noroxymorphone. However, Buehler discloses a process for preparing morphinan-6one products with low levels of impurity. The process of preparing pure noroxymorphone (see scheme 5 on page 5) via formation of bisulfite adduct using sulfurous acid (see scheme 12 A and 12 B on page 10, lines 6-18 in left column on page 10 as well as examples 2A and 2B on page 16) meets all the limitations of instant claims except that the instant process mentions colored impurities instead of alpha, beta unsaturated ketones as impurity. However, the instant specification does not define colored impurities. Since all the steps in the instant process and the cited reference are identical, it would have been obvious to one skilled in the art to remove colored impurities also in order to prepare pure noroxymorphone and then use it to prepare naloxone and naltrexone with reasonable expectations of success. 10 . Claims 41 and 5 1 -54 are rejected under 35 U.S.C. 103 as being unpatentable over M itchell (WO 201 7 / 207519 A1 ) in view of Buehler ( US 2018/00 0 8596 A1, cited on applicant’s form 1449). M itchell discloses preparing naloxone , naltrexone, nalme f ene and nalbuphine f rom noroxymorphone (see examples 29-31 on pages 48-50 and claim 15 , last line ). Mitchell meets all the limitations of instant claims except that it does not teach preparing pure noroxymorphone. However, Buehler discloses a process for preparing morphinan-6one products with low levels of impurity. The process of preparing pure noroxymorphone (see scheme 5 on page 5) via formation of bisulfite adduct using sulfurous acid (see scheme 12 A and 12 B on page 10, lines 6-18 in left column on page 10 as well as examples 2A and 2B on page 16) meets all the limitations of instant claims except that the instant process mentions colored impurities instead of alpha, beta unsaturated ketones as impurity. However, the instant specification does not define colored impurities. Since all the steps in the instant process and the cited reference are identical, it would have been obvious to one skilled in the art to remove colored impurities also in order to prepare pure noroxymorphone and then use it to prepare naloxone , naltrexone , nalmefene and nalbuphine with reasonable expectations of success. 1 1 . Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT CHARANJIT AULAKH whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-0678 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday-Friday 7:00-3:30 . 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, FILLIN "SPE Name?" \* MERGEFORMAT Clinton A Brooks can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-270-7682 . 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. /CHARANJIT AULAKH/ Primary Examiner, Art Unit 1621
Read full office action

Prosecution Timeline

Apr 25, 2023
Application Filed
Dec 16, 2025
Non-Final Rejection — §102, §103 (current)

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Prosecution Projections

1-2
Expected OA Rounds
81%
Grant Probability
65%
With Interview (-16.0%)
2y 3m
Median Time to Grant
Low
PTA Risk
Based on 1741 resolved cases by this examiner. Grant probability derived from career allow rate.

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