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
Status of the Claims
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 Claims 9 and 39-42 are withdrawn from further consideration as being directed towards nonelected species until a generic claim has been found allowable.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.
Claim Objections Overcome by Amendment
Applicant has amended all of claims 4-8, 10-33, and 35-38 in the response filed on April 27th 2026 to be in proper dependent form. The associated claim objections are thereby withdrawn. Examiner notes that claims 9 and 39-42, currently withdrawn, were not amended in a similar manner, and would receive a similar claim objection upon rejoinder.
35 U.S.C. § 112(a) Rejections Overcome by Amendment
Applicant’s amendment to claim 1 in the response filed on April 27th 2026 is acknowledged. Applicant has amended the claim to no longer recite a spiro-condensed ring system. The 112(a) rejections over claims 1-2, 5-7, 11-14, 16-33, and 35-38 are thereby withdrawn.
35 U.S.C. § 102 Rejections Overcome by Amendment
Applicant’s amendment to claim 1 in the response filed on April 27th 2026 is acknowledged. Applicant has amended claim 1 to require that the integer n, representative of the number of R3 substituents, is not zero when ring C is a cyclohexyl. As CAS Registry No. 1051894-75-7 does not include any attachments on the cyclohexyl group, the 102 rejections over claims 1-6, 8, 11-17, 19-27, and 29-33 are withdrawn.
35 U.S.C. § 103 Rejections Necessitated by Amendment
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.
Claims 1-6, 8, 11-13, 15-17, 19-27, and 29-33 are rejected under 35 U.S.C. 103 as being unpatentable over Gomez (WO 2012/046030 A2).
Gomez teaches:
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126
114
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(Gomez, pg. 55).
Gomez’s compound is nearly equivalent to applicant’s generic compound,
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283
447
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,
wherein:
Ra is H
Ring A is phenyl
Ring B is phenyl
Ring C is morpholine
k is 0
m is 2
R3 is ORk
Rk is H and CH3
n is 0
with the exception of the C-2-chain connecting the C ring to the main structure:
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126
114
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.
While Gomez does not explicitly embody a structure wherein the morpholine ring is connected directly to the core structure, one of ordinary skill in the art would have a reasonable expectation of success in developing such a compound, because Gomez suggests a single-bond linker to the C-ring, and explicitly embodies it in other structures. See Gomez, claim 12:
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211
215
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26
515
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30
197
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.
As this difference is explicitly suggested by Gomez, and remains the only difference between Gomez’s compound and applicant’s claims 1-6, 8, 11-13, 15-17, 19-27, and 29-33, one of ordinary skill in the art would have a reasonable expectation of success in developing Gomez’s compound wherein said linker is a single bond, and claims 1-6, 8, 11-13, 15-17, 19-27, and 29-33 are prima facie obvious.
Allowable Subject Matter
Claims 7, 10, 14, 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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283
447
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.
Compounds anticipatory of applicant’s genus are found in the art (see above). However, Applicant’s particular compounds, as well as compounds wherein ring A is pyridine or pyrimidine or wherein Ring C is tetrahydro-2H-pyranyl, piperidinyl, or substituted cyclohexyl, are not found in the art.
Applicant has additionally filed the related Application No. 18/262,034, directed towards a series of FPR1 modulators with a different core structure.
Claims 7, 10, 14, 18, and 34-38 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
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.
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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/A.J.S./Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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