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
Filing Receipt and Priority
The filing receipt mailed 05/07/2024 states that the instant application is a 371 of PCT/JP2022/022847, filed 06/06/2022, which claims foreign benefit of JAPAN 2021-095405, filed 06/07/021.
The instant claims find support in the foreign application. Therefore, the effective filing date is 06/07/2021.
Information Disclosure Statement
The information disclosure statements submitted 02/26/2024, 08/29/2025, and 01/09/2026 have been considered.
Species Election
Applicant elected compound 5, shown below, in the phone call made 01/30/2026.
Elected Compound
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At examiner’s discretion, search and examination has been broaden to include all compounds represented by compound of formula I in claim 1.
Drawings
The drawings are objected to for at least Fig. 5. A higher quality image of the figure is requested as the text is difficult to read.
Rejections
Claim Rejections - 35 USC § 112(b)
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 22, 25-27 and 27 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.
Claim 22 states “R1 is C1-10 alkyl, C(O)-C1-10 alkyl, C1-6 alkylene-R1a or C(O)-C1-6 alkylene R1a” and then states “wherein the alkyl and alkylene…”. This is repeated for R2 and is also found in claims 25-27 and 37.
The phrase “the alkyl and alkylene” is contradicted by the first recitation as there are multiple alkyl and alkylene within the first recitation. Applicant may amend the claim to remove “the” to overcome the rejection.
Claim Rejections - 35 USC § 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.
Claim(s) 22, 24-28, 31-35, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by STN (STN Registry, online, 08 August 2012, retrieved from STN, CAS registry no. 1387968-70-8, of the record).
STN discloses the compound below which embraces the limitations of the claims.
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Claim(s) 22-31 and 37-41 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as anticipated by Kyle (WO 01/39775).
Kyle discloses the following compound on p. 8.
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Structure:
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Regarding claims 37-41, claims 37-41 are drawn to compositions. Claim 37 specifically states “A pharmaceutical composition comprising a compound of formula (I)…”.
Dependent claims 38-41 claim properties of the composition which are “suitable for treating a disease associated with the activation of T-type calcium channels” (claim 38), a listing of diseases (claim 39), pain (claim 40), and pruritus (claim 41). The recitation of “suitable for treating…” indicates that the limitations are properties of the composition. Via the current claim language, the composition of claim 38 would have the property of being suitable to treat any of the diseases claimed. Therefore, the teaching of the compound in Kyle and the contemplation of pharmaceutical compositions comprising the compound make claims 37-41 obvious.
Kyle further claims pharmaceutical compositions comprising the compound above in reference claim 13.
Kyle anticipates claims 22-31 and 37-41.
Allowable Subject Matter
Claim 36 is allowed. A search did not result in any are that could be applied to claim 36.
Conclusion
Claims 22-35 and 37-41 are rejected.
Claim 36 is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUISALBERTO GONZALEZ whose telephone number is (571)272-1154. The examiner can normally be reached M-F 8:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at (571) 272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/L.G./Examiner, Art Unit 1624
/SUSANNA MOORE/Primary Examiner, Art Unit 1624