DETAILED ACTION
1. Claims 12-22 are pending. Applicant's election without traverse of group II, claims 12-14, 16-22, drawn to a method of preventing or treating nociceptive pain using the compound of formula (BI) in claim 16, wherein XB is N, YB is C in the reply filed on 06/24/2026 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-14, 16-22 drawn to a method of preventing or treating nociceptive pain using the compound of formula (BI) in claim 16, wherein XB is N, YB is C are examined. Claim 15 and the remaining subject matter of claims 12-14, 16-22 are withdrawn per 37 CFR 1.142(b).
2. Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 16-22 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claims 16-22 are rejected because the term “formula (BI)” is confusing. What is the structure of the “formula (BI)? Correction is required.
3. Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 12-14, 16-22 are rejected under 35 U.S.C. 112, first paragraph, because the specification, does not reasonably provide enablement for preventing nociceptive pain. The specification does not enable any person skilled in the art to which, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. Applicants are not enabled for preventing any of these diseases. The only established prophylactics are vaccines not the compounds such as present here. In addition, it is presumed that “prevention” of the claimed diseases would require a method of identifying those individuals who will develop the claimed diseases before they exhibit symptoms. There is no evidence of record that would guide the skilled clinician to identify those who have the potential of becoming afflicted.
“The factors to be considered [in making an enablement rejection] have been summarized as the quantity of experimentation necessary, the amount of direction or guidance presented, the presence or absence of working examples, the nature of the invention, the state of the prior art, the relative skill of those in that art, the predictability or unpredictability of the art, and the breadth of the claims”, In re Rainer, 146 USPQ 218 (1965); In re Colianni, 195 USPQ 150, Ex parte Formal, 230 USPQ 546. 1) As discussed above, preventing diseases requires identifying those patients who will acquire the disease before occurs. This would require extensive and potentially opened ended clinical research on healthy subjects. 2) The passage spanning line 31, page 39 to line 32, page 40 lists the diseases Applicant intend to treat. 3) There is no working example of such a preventive procedure in man or animal in the specification. 4) The claims rejected are drawn to medical treatment and are therefore physiological in nature. 5) The state of the art is that no general procedure is art-recognized for determining which patients generally will become afflicted before the fact. 6) The artisan using Applicants invention would be a Board Certified physician who specialized to treat diseases with an MD degree and several years of experience. Despite intensive efforts, pharmaceutical science has been unable to find a way of getting a compound to be effective for the prevention of disorder diseases generally. Under such circumstances, it is proper for the PTO to require evidence that such an unprecedented feat has actually been accomplished, In re Ferens, 163 USPQ 609. No such evidence has been presented in this case. The failure of skilled scientists to achieve a goal is substantial evidence that achieving such a goal is beyond the skill of practitioners in that art, Genentech vs. Novo Nordisk, 42 USPQ2nd 1001, 1006. This establishes that it is not reasonable to any agent to be able to prevent disorders generally. That is, the skill is so low that no compound effective generally against disorders has ever been found let alone one that can prevent such conditions. 7) It is well established that “the scope of enablement varies inversely with the degree of unpredictability of the factors involved", and physiological activity is generally considered to be an unpredictable factor. See In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970). 8) The claims broadly read on all patients, not just those undergoing therapy for the claimed diseases and on the multitude of compounds embraced by Formula (I).
The Examiner suggests deletion of the word “prevention”.
4. 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.
Claims 12-14, 16-22 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Antonioli et al., US 2023/0149421. Antonioli et al. discloses the instant claimed compound, which from the STN search is
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, which anticipates the instant compounds and can be used to neuropathic pain pathology, immune/inflammatory pathological conditions on page 1. Therefore, the instant claims are anticipated by Antonioli et al.
5. Claims 12-14, 16-22 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Imai et al., WO 2017188365. Imai et al. discloses the instant claimed compound, which from the STN search is
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, which anticipates the instant compounds and can be used to treat pain such as neuropathic pain on abstract. Therefore, the instant claims are anticipated by Imai et al.
6. Claims 12-14, 16-22 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Sakuma et al., US 10150744. Sakuma et al. discloses the instant claimed compound, which from the STN search is
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, which anticipates the instant compounds and can be used to treat neuropathic pain on column 1. Therefore, the instant claims are anticipated by Sakuma et al.
7. Claims 12-14, 16-22 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Sakuma et al., US 9873683. Sakuma et al. discloses the instant claimed compound, which from the STN search is
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, which anticipates the instant compounds and can be used to treat neuropathic pain on column 1. Therefore, the instant claims are anticipated by Sakuma et al.
8. Claims 12-14, 16-22 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Ushioda et al., US 9382236. Ushioda et al. discloses the instant claimed compound, which from the STN search is
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, which anticipates the instant compounds and can be used to treat inflammation and pain on column 1. Therefore, the instant claims are anticipated by Ushioda et al.
9. Claims 12-14, 16-22 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Ima et al., WO 2020050253. Ima et al. discloses the instant claimed compound, which from the STN search is
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, which anticipates the instant compounds and can be used to treat inflammation and pain on abstract. Therefore, the instant claims are anticipated by Ima et al.
10. Claims 12-14, 16-22 are rejected under 35 U.S.C.102(a)(1) and 102(a)(2) as being anticipated by Ushioda et al., US 9969700. Ushioda et al. discloses the instant claimed compound, which from the STN search is
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, which anticipates the instant compounds and can be used to treat inflammation and pain on abstract. Therefore, the instant claims are anticipated by Ushioda et al.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Niloofar Rahmani whose telephone number is
571-272-4329. The examiner can normally be reached on Monday through Friday from 8:30 am to 5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor, can be reached on 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 703-872-9306.
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 http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/NILOOFAR RAHMANI/
07/07/2026
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