DETAILED ACTION
This action is in response to Applicant’s submission dated June 29, 2026, in which Applicant elected without traverse the invention of Group I as well as a species.
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 .
Information Disclosure Statement
The references contained in the IDS dated November 3, 2025 are made of record.
Election/Restriction
Claims 7-8, 15-16, and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected Groups II and III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 29, 2026.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-6, 9-14, and 17-18 are examined. A complete reply to the final rejection must include cancellation of non-elected claims or other appropriate action (37 CFR 1.144) See MPEP § 821.01.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
Claims 1-6, 9-14, and 17-18 are rejected under 35 U.S.C. 103 as being rendered obvious by Williams, Jonnie R., WO 2019164689 by MYMD PHARMACEUTICALS INC. dated August 29, 2019.
Determining the scope and contents of the prior art.
Specifically, the compound: 2-[(1R,5R)-3-methyl-5-(1-methylethenyl)-2-cyclopenten-1-yl]-5-pentyl-1,3-benzenediol with the structure:
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146
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renders the aforementioned claims obvious where R1 is methyl, R2 is alkyl (pentane), and R3 is H. The references compounds exhibit the same activity as the compounds of the instant claims.
Ascertaining the difference between the prior art and the claims at issue.
The reference differs from the claims at issue in that they are stereoisomers of one another. “Structural relationships may provide the requisite motivation or suggestion to modify known compounds to obtain new compounds … a known compound may suggest its analogs or isomers, either geometric isomers (cis v. trans) or position isomers (e.g., ortho v. para).” In re Deuel 34 USPQ2d 1210, 1214. See also MPEP 2144.09, second paragraph. Here, the former geometric isomers (cis v. trans) applies.
Resolving the level of skill in the art.
The Court has addressed this obviousness issue: “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 12 (2007). “When there is a design need or market pressure to solve a problem and there are finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, … the fact that a combination was obvious to try might show that it was obvious”. Id. at 17. That is exactly the case here. The scope of geometric isomers is a very finite list (2) and Applicant was not left to pick and choose from a generic disclosure which compound(s) should be tested.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to ERICH A LEESER whose telephone number is (571) 272-9932. The Examiner can normally be reached Monday through Friday from 10-6 PST, M-F. PST.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Mr. James Alstrum-Acevedo can be reached at (571) 272-5548. The fax number for the organization where this application is assigned is 571-273-8300.
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/ERICH A LEESER/Primary Examiner, Art Unit 1622
United States Patent and Trademark Office
Tel. No.: (571) 272-9932
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