DETAILED ACTION
Notice of AIA Status
The instant application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the Leahy-Smith America Invents Act (AIA ).
If the status of the application as subject to AIA or pre-AIA is incorrect, any correction of the statutory basis (e.g., changing from AIA to pre-AIA ) for a rejection under 35 U.S.C. §§ 102 and/or 103 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.
Status of the Claims
The listing of claims filed 16 April 2024 has been examined.
Claims 1–10, 12, 16, 17, 20–25, and 28 are pending. Claims 4–10, 12, 16, 17, 20–25, and 28 are amended. Claims 11, 13–15, 18, 19, 26, 27, and 29 are canceled.
Benefit of Earlier Filing Date
The instant application was filed 15 August 2023; is a national stage application of PCT/US2022/016659, filed 16 February 2022, and claims the benefit of U.S. Prov. Pat. App. Serial No. 63/150,483, filed 17 February 2021. Acknowledgment is made of Applicant’s claim.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 25 October 2023 is acknowledged and has been considered.
Claim Rejections - 35 U.S.C. § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(i) Claims 1, 3–7, 12, 16, 17, 20, and 23 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Ye et al., Bioorg. & Med. Chem. Lett. (2003), 13, 3361–3165 (“Ye”) [IDS].
Ye discloses compound 5,
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. (Ye, p.3362). Compound 5 anticipates Formula (I) when n = 1; R5 = H; R4a and R4b = H; X = bond, p = 0; R1 and R2 = H.
(ii) Claims 1, 2, 4–7, 16, 17, 20, and 23 are rejected under 35 U.S.C. §§ 102(a)(1) and (a)(2) as being anticipated by US 8,664,261 (“Furrer”).
Furrer discloses Example 2D,
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(Furrer, col. 5–6). Example 2D anticipates Formula (I) when n = 0; R4a and R4b = H; X = bond, p = 1; R3 = alkyl; R2 and R5 = H; and R1 = alkyl; and R1 and R3 together form a heterocycloalkyl.
Allowable Subject Matter
Claims 8–10, 21, 22, 24, 25, and 28 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. None of the cited references disclose or suggest the subgenus provided in those claims, a pharmaceutical composition, or a method of treating pain.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jason Nolan at (571) 272-2480. The examiner can normally be reached Monday through Friday between 9:00–5:00.
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/JASON M. NOLAN/Patent Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623