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
Election of Species and Status of the Claims
Applicant’s election of
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as the single specific compound as well as ‘hemorrhagic stroke,’ as the single disease/disorder/condition in the response filed on December 1st 2025 is acknowledged. Claims 1-42 are pending. Claims 9 and 39-42 are withdrawn from further consideration as being directed towards nonelected species until a generic claim has been found allowable. Claims 1-8 and 10-38 are examined on their merits.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statements filed on August 15th 2025, March 5th 2025, October 10th 2024, and October 7th 2023 are in compliance with the provisions of 37 CFR 1.97 and have been considered in full. A signed copy of references cited from the IDS is included with this Office Action.
Claim Objections
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4-8, 10-33 and 35-38 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim may not depend on another multiply dependent claim. See MPEP § 608.01(n). For the purpose of examination, each of the claims will be treated as if they depend on the first claim listed (Ex: claim 4 reads “The compound according to any one of claims 1 to 3” and will be treated as “The compound according to claim 1”). Examiner notes that this deficiency is also present in claims 9 and 39-42, currently not examined on their merits.
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 following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 1-2, 5-7, 11-14, 16-33, and 35-38 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 is directed to a compound of Formula I:
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wherein
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Applicant provides no embodies species wherein said bond is absent (i.e. wherein ring A is spiro-condensed with the core structure). As applicant has not demonstrated possession of the compounds of Formula I wherein said bond is absent, applicant’s written description is considered inadequate to support claims 1-2, 5-7, 11-14, 16-33, and 35-42 as written. Applicant will only be considered to have possession of compounds of Formula I wherein said bond is a single bond.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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.
Claims 1-6, 8, 11-17, 19-27, and 29-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1051894-75-7 (Entered STN September 23rd 2008):
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CAS Registry No. 1051894-75-7 is equivalent to applicant’s generic compound,
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wherein:
Ra is H
Ring A is phenyl
Ring B is phenyl
Ring C is C6-cycloalkyl
R1 is C1-alkyl
k is 1
R2 is F
m is 1
n is 0
and is anticipatory of claims 1-6, 8, 11-17, 19-27, and 29-33.
Claims 1-6, 8, 11-17, and 19-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1051883-28-3 (Entered STN September 23rd 2008):
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CAS Registry No. 1051883-28-3 is anticipatory of claims 1-6, 8, 11-17, and 19-33.
Allowable Subject Matter
Claims 7, 10, 18, and 34-38 are free of the prior art.
Applicant has developed inhibitors of formyl peptide receptor 1 (FPR1) of general Formula I:
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Compounds anticipatory of applicant’s genus are found in the CAS Registry (see above and see search documents). However, Applicant’s particular compounds, as well as compounds wherein ring A is pyridine or pyrimidine are not found in the art.
Conclusion
Claims 1-8, 11-33, and 35-38 are rejected
Claims 4-38 are objected to.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anthony Seitz whose telephone number is (703)756-4657. The examiner can normally be reached 7:30 AM ET - 5:00 PM ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Lundgren can be reached at (571)272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.J.S./Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629