DETAILED ACTION
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 .
Status of the Claims/Response to Amendments
Claims 16-30 are pending in the amendment filed 6/28/24, canceling claims 1-15 and entering new claims 16-30, which have been examined on the merits.
A telephone call was attempted to resolve the issues in the current action, but the representative listed on the filed amendment (Richard McNeely, Reg # 59149) could not be reached at the number provided. Updated contact information would be greatly appreciated.
Priority
The instant application is a national stage filing of PCT EP22/65055, filed 6/2/22 which claims foreign priority to EP 21177320.5, filed 6/2/21.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/21/24 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 25 is 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.
Claim 25 recites: A PDE4D inhibitor comprising a compound according to claim 16 or a pharmaceutical composition comprising the compounds and a pharmaceutically acceptable carrier, wherein the PDE4D inhibitor selectively inhibits type D isoforms of PDE4.
Claim 16 is to a compound, and does not provide support for plural “compounds”, and thus it is unclear to what compounds the claim is referring. Further, it is unclear if the claim is to a PDE4D inhibitor that is (a) a compound or (b) a pharmaceutical composition of the compound or whether it is (a) a PDE4D inhibitor comprising the compound or (b) a pharmaceutical comprising the compounds, to which it was unclear what compounds are in the composition. Because there are two distinct interpretations, the claim is indefinite.
The claim appears to be an attempt to have the compound, or pharmaceutical composition where the compound is a PDE4E selective inhibitor, rather than drafting two dependent claims to each the compound and the composition (e.g. cancelation of claim 25 and new claims 31 and 32 asa dependent claim that is: “31. The compound of claim 16, or pharmaceutically acceptable salt thereof, wherein the compound is a PDE4D selective inhibitor.” and “32. A pharmaceutical comprising the compound of claim 31 and a pharmaceutically acceptable carrier.”). Alternatively, the claim may depend from claim 20, with the limitation as “The medicament of claim 20, where the compound of claim 16 is a PDE4D selective inhibitor.” Amendment of claim 25 similar to these suggestions would likely result in an allowable claim.
Allowable Subject Matter
Claims 1-24 and 26-30 are allowed.
Claim 25, rejected under 112 (above) would be allowable if redrafted to overcome the indefiniteness.
The closest prior art, US Patents 7226930, US 5679699, and 7495017, and Simoni (J. Med. Chem. 2005, 48, 3, 723–736) all cited on the enclosed PTO-892, teach compounds with the similar core structure, however they do not reasonably suggest R1 and R3 as pendant groups, nor do they alone, or in combination with any other art, suggest that it would have been obvious to have substituted the compounds with R3 as a functional group.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew D Kosar whose telephone number is (571)272-0913. The examiner can normally be reached Monday-Friday, 7am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Michener can be reached at 571-272-1600. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Andrew D Kosar/ Supervisory Patent Examiner, Art Unit 1625