Prosecution Insights
Last updated: April 19, 2026
Application No. 18/254,270

MEDICINE FOR ALLEVIATING NEUROPATHIC PAIN

Non-Final OA §103
Filed
May 24, 2023
Examiner
ROBINSON, MIKHAIL O'DONNEL
Art Unit
1627
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Asahi Kasei Pharma Corporation
OA Round
1 (Non-Final)
57%
Grant Probability
Moderate
1-2
OA Rounds
3y 6m
To Grant
99%
With Interview

Examiner Intelligence

Grants 57% of resolved cases
57%
Career Allow Rate
59 granted / 103 resolved
-2.7% vs TC avg
Strong +48% interview lift
Without
With
+47.7%
Interview Lift
resolved cases with interview
Typical timeline
3y 6m
Avg Prosecution
50 currently pending
Career history
153
Total Applications
across all art units

Statute-Specific Performance

§101
3.8%
-36.2% vs TC avg
§103
41.6%
+1.6% vs TC avg
§102
20.9%
-19.1% vs TC avg
§112
20.3%
-19.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 103 resolved cases

Office Action

§103
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 . 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. Claims 13-20 and 29-37 are rejected under 35 U.S.C. 103 as being unpatentable over Noguchi et al. (US Patent No. 20210085667) in view of Ying et al. Over-expression of P2X7 receptors in spinal glial cells contributes to the development of chronic postsurgical pain induced by skin/muscle incision and retraction (SMIR) in rats, Experimental Neurology, September 2014, Pages 836-843 and Ursu et al. Gain and loss of function of P2X, receptors: mechanisms, pharmacology and relevance to diabetic neuropathic pain, Molecular Pain, 2014, Pages 1-11. Regarding claims 13, 16, 18-20, 29-31 and 35-37, Noguchi teaches a method for the treatment for neuropathic pain of peripheral neuropathy and diabetic neuropathy (relevant to claims 13 and 16) (para. 0645) comprising P2X7 receptor antagonist of (5S,8S)-N-(2,4-dichloro benzyl)-5-fluoro-8- hydroxy-8- (hydroxymethyl)-5,6,7,8- tetrahydroquinoline-5- carboxamide, (5S,8S)-N-(2-chloro-4- fluorobenzyl)-5- fluoro-8-hydroxy-8- (hydroxymethyl)-5,6,7,8- tetrahydroquinoline-5- carboxamide, (5S,8S)-N-(2,4-dichloro- 6-fluorobenzyl)-5- fluoro-8-hydroxy-8- (hydroxymethyl)-5,6,7,8- tetrahydroquinoline-5- carboxamide, (5S,8S)-N-(2-chloro-4,6- difluorobenzyl)-5- fluoro-8-hydroxy-8- (hydroxymethyl)-5,6,7,8- tetrahydroquinoline-5- carboxamide (relevant to claims 18-20 and 29-31 and 35-37) (Table 54). Noguchi fails to teach the treatment of P2X7 receptor neuropathic pain as postoperative pain and P2X7 receptor gain of function. Ying teaches P2X7 receptor antagonist of BBG and A438079 prevent skin/muscle incision retraction (SMIR) induced mechanical allodynia which is a neuropathic pain (page 839, right column, fig. 7). Ying additionally teaches the mechanism of postsurgical pain is directly related to the upregulation of the P2X7 receptor by SMIR (relevant to claims 32-34) (abstract). Ursu teaches single nucleotide polymorphisms (SNPs) in the gene P2RX7, coding for the ATP-gated ion channel P2X7, have been described that of cause gain-of-function (GOF) and loss-of-function (LOF). P2RX7 SNPs have been associated with more or less severe pain scores in patient suffering of post-mastectomy pain and osteoarthritis (abstract). Ursu additionally teaches the study of P2RX7 SNPs rs208294, rs1718119 and rs3751143 transfection in НЕK-293 cells caused gain- and loss-of function phenotypes. In addition P2X7 receptor antagonist of A-804598, A740003 and AZ11654373 blocked either channel or pore activity in the three P2X7 variants while showing no significant result difference between the antagonist, showing that despite the difference in P2X7 variants, their function and mechanism of being blocked are similar (relevant to claims 14-15)(page 4, right column to page 5 left column). Therefore, It would have been obvious to someone of ordinary skill in the art at the time of filling to have used the P2X7 receptor antagonist taught by Noguchi to treat postoperative pain and P2X7 receptor gain of function. One would have been motivated to do so from the teachings of Ying on P2X7 receptor antagonist are known for treatment of postoperative pain and Ursu on the use of P2X7 receptor antagonist having the same effect on P2X7 receptor gain of function variants. There is a reasonable expectation of having the same outcome of treatment on P2X7 receptor postoperative pain and P2X7 receptor gain of function as the P2X7 receptor antagonist taught by Ying and Ursu as the P2X7 receptor antagonist taught by Noguchi. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to MIKHAIL O'DONNEL ROBINSON whose telephone number is (571)270-0777. The examiner can normally be reached Monday-Friday 7:30am-5:30pm. 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, Kortney Klinkel can be reached at 571-270-5239. 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. MIKHAIL O'DONNEL. ROBINSON Examiner Art Unit 1627 /MIKHAIL O'DONNEL ROBINSON/Examiner, Art Unit 1627 /SARAH PIHONAK/Primary Examiner, Art Unit 1627
Read full office action

Prosecution Timeline

May 24, 2023
Application Filed
Aug 29, 2025
Non-Final Rejection — §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12600729
NEW-TYPE BENZAZEPINE FUSED RING DERIVATIVE
2y 5m to grant Granted Apr 14, 2026
Patent 12595247
SUBSTITUTED PYRAZOLO PIPERIDINE CARBOXYLIC ACIDS
2y 5m to grant Granted Apr 07, 2026
Patent 12590086
3-((1H-PYRAZOL-4-YL)METHYL)-6'-(PHENYL)-2H-(1,2'-BIPYRIDIN)-2-ONE DERIVATIVES AND RELATED COMPOUNDS AS GPR139 ANTAGONISTS FOR USE IN A METHOD OF TREATMENT OF E.G. DEPRESSION
2y 5m to grant Granted Mar 31, 2026
Patent 12583871
PRMT5 INHIBITORS
2y 5m to grant Granted Mar 24, 2026
Patent 12583825
BENZO[H]QUINAZOLIN-4-AMINE AND THIENO[3,2-H]QUINAZOLIN-4-AMINE DERIVATIVES FOR THE TREATMENT OF CANCER
2y 5m to grant Granted Mar 24, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

AI Strategy Recommendation

Get an AI-powered prosecution strategy using examiner precedents, rejection analysis, and claim mapping.
Powered by AI — typically takes 5-10 seconds

Prosecution Projections

1-2
Expected OA Rounds
57%
Grant Probability
99%
With Interview (+47.7%)
3y 6m
Median Time to Grant
Low
PTA Risk
Based on 103 resolved cases by this examiner. Grant probability derived from career allow rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month