Prosecution Insights
Last updated: April 19, 2026
Application No. 18/558,245

OREXIN RECEPTOR AGONISTS AND USES THEREOF

Non-Final OA §112
Filed
Oct 31, 2023
Examiner
HABTE, KAHSAY
Art Unit
1624
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Jazz Pharmaceuticals Ireland Limited
OA Round
1 (Non-Final)
85%
Grant Probability
Favorable
1-2
OA Rounds
1y 11m
To Grant
93%
With Interview

Examiner Intelligence

Grants 85% — above average
85%
Career Allow Rate
1348 granted / 1589 resolved
+24.8% vs TC avg
Moderate +8% lift
Without
With
+8.1%
Interview Lift
resolved cases with interview
Fast prosecutor
1y 11m
Avg Prosecution
45 currently pending
Career history
1634
Total Applications
across all art units

Statute-Specific Performance

§101
1.7%
-38.3% vs TC avg
§103
6.9%
-33.1% vs TC avg
§102
18.9%
-21.1% vs TC avg
§112
47.0%
+7.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1589 resolved cases

Office Action

§112
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 . Claims 1, 3, 5, 7, 11, 13, 18-19, 22-23, 26, 28, 30-31, 33-34, 36-37, 39 and 43 are pending in this application. Claim Rejections - 35 USC § 112 The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claims 1, 3, 5, 11, 13, 18-19, 22-23, 26, 28, 30-31, 33-34, 36-37, 39 and 43 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention: a. Claim 1 and claims dependent thereon are rejected because the term “halo” in definition of variables R4 and R5 is not clear. Applicants have amended claim 1 and inserted “halo” to the definition of variables R4 and R5 that are already recites “halogen”. PNG media_image1.png 85 616 media_image1.png Greyscale Since “halo” is an abbreviated form of “halogen”, it is unclear why applicants amended claim 1 and inserted “halo”. Is this a typographical error? If so, applicants have to delete “halo” from claim 1. b. Claims 36 and 37 are rejected because some compounds are not drawn properly. The ring nitrogen that is attached to hydrogen (i.e. NH) is overlapping with the methylene moiety (-CH2-). See some examples below. PNG media_image2.png 163 312 media_image2.png Greyscale PNG media_image3.png 347 300 media_image3.png Greyscale PNG media_image4.png 126 324 media_image4.png Greyscale PNG media_image5.png 159 661 media_image5.png Greyscale In order to overcome this rejection, applicants have to redraw the defective compounds and separate the H that is attached to the ring N from -CH2-. Note that some compounds are drawn properly and not overlap with each other. See the following examples. PNG media_image6.png 249 649 media_image6.png Greyscale Information Disclosure Statement 4. Applicant’s Information Disclosure Statement, filed on 05/24/2024 has been acknowledged. Please refer to Applicant’s copies of the 1449 submitted herewith. Objection 5. Claim 7 is 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. Specification 6. The abstract of the disclosure is objected to because the abstract submitted with the case on 010/31/2023 is part of WIPO document with irrelevant information such as publication date, inventor name, etc. It is recommended that applicants submit an abstract in a separate sheet of paper. Conclusion 7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kahsay Habte Ph.D. whose telephone number is (571)272-0667. The examiner can normally be reached on 8:30 - 5:00 PM. 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, JEFFREY MURRAY can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Kahsay Habte/ Primary Examiner, Art Unit 1624
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Prosecution Timeline

Oct 31, 2023
Application Filed
Jan 05, 2026
Non-Final Rejection — §112 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12590073
NOVEL PROCESS FOR THE PREPARATION OF MACROCYCLIC CHELANT 2,2',2''-(10-(2-HYDROXYPROPYL)-1,4,7,10-TETRA AZACYCLODODECANE-1,4,7-TRIYL) TRIACETIC ACID AND IT'S COMPLEXES WITH PARAMAGNETIC METAL IONS
2y 5m to grant Granted Mar 31, 2026
Patent 12590067
HERBICIDAL CYCLOHEXANEDIONE DERIVATIVES
2y 5m to grant Granted Mar 31, 2026
Patent 12583866
PYRIDO[2,3-B][1,4]OXAZINES OR TETRAHYDROPYRIDO[2,3-B][1,4]OXAZEPINES AS IAP ANTAGONISTS
2y 5m to grant Granted Mar 24, 2026
Patent 12576040
IONIZABLE LIPIDS AND METHODS OF MANUFACTURE AND USE THEREOF
2y 5m to grant Granted Mar 17, 2026
Patent 12577253
5,6-DIHYDROTHIENO[3,4-H]QUINAZOLINE COMPOUND
2y 5m to grant Granted Mar 17, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
85%
Grant Probability
93%
With Interview (+8.1%)
1y 11m
Median Time to Grant
Low
PTA Risk
Based on 1589 resolved cases by this examiner. Grant probability derived from career allow rate.

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