Prosecution Insights
Last updated: July 17, 2026
Application No. 18/999,866

DERIVATIVES OF SUBSTITUTED MORPHOLINES AND USES THEREOF

Non-Final OA §112
Filed
Dec 23, 2024
Priority
Mar 18, 2021 — provisional 63/162,671 +2 more
Examiner
YOO, SUN JAE
Art Unit
1621
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Supernus Pharmaceuticals Inc.
OA Round
3 (Non-Final)
71%
Grant Probability
Favorable
3-4
OA Rounds
1y 1m
Est. Remaining
71%
With Interview

Examiner Intelligence

Grants 71% — above average
71%
Career Allowance Rate
875 granted / 1231 resolved
+11.1% vs TC avg
Minimal +0% lift
Without
With
+0.0%
Interview Lift
resolved cases with interview
Typical timeline
2y 8m
Avg Prosecution
102 currently pending
Career history
1292
Total Applications
across all art units

Statute-Specific Performance

§101
0.7%
-39.3% vs TC avg
§103
19.8%
-20.2% vs TC avg
§102
27.5%
-12.5% vs TC avg
§112
24.6%
-15.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1231 resolved cases

Office Action

§112
DETAILED ACTION Notice of Pre-AIA or AIA Status 1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Continued Examination Under 37 CFR 1.114 2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 25, 2025 has been entered. Election/Restrictions 3. Applicant’s election without traverse of Group II in the reply filed on January 8, 2026 is acknowledged. 4. The election of species requirement is withdrawn. The full scope of the elected group was searched and examined. 5. Claims 1-3 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter. Election was made without traverse in the reply filed on January 8, 2026. Information Disclosure Statement 6. The information disclosure statement (IDS) submitted on October 23, 2025 was in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The IDS was considered. A signed copy of form 1449 is enclosed herewith. Response to Amendment 7. The amendments to the claims filed on November 25, 2025 have been fully considered. The amendments are sufficient to overcome the outstanding rejections under prior art. The 35 USC 102 and 35 USC 103 rejections are withdrawn. 8. The obviousness-type double patenting rejections are withdrawn in view of the terminal disclaimer filed. Terminal Disclaimer 9. The terminal disclaimer filed on November 25, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration dates of US 11,634,415 and US 11,919,889 and US 11,964,951 and US 12,215,097 and US Appl 18,617,255 and US Appl 18,740,059 has been reviewed and is accepted. The terminal disclaimer has been recorded. Claim Objections 10. Claim 7 is objected to for the following informality. The claim is missing a period. Claim Rejections - 35 USC § 112 The following is a quotation of the first paragraph of 35 U.S.C. 112(a): IN GENERAL.—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 or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 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. 11. Claims 4, 5 and 7 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims have been amended to include the proviso “other than -C(O)NH2 connected through a nitrogen atom.” The limitation was not described in the originally filed disclosure. Moreover, the structural limitation of Z being -C(O)NH2 is not described in the originally filed disclosure. Lastly, the structural limitation of connection through a nitrogen atom is not described in the originally filed disclosure. For these reasons, the inclusion of this structural limitation in the proviso adds new matter to the claims. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN JAE YOO whose telephone number is (571)272-9074. The examiner can normally be reached Mon-Fri 8-5. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /SUN JAE YOO/Primary Examiner, Art Unit 1621
Read full office action

Prosecution Timeline

Dec 23, 2024
Application Filed
Feb 27, 2025
Non-Final Rejection mailed — §112
May 22, 2025
Response Filed
Jun 18, 2025
Final Rejection mailed — §112
Nov 25, 2025
Request for Continued Examination
Dec 01, 2025
Response after Non-Final Action
Feb 02, 2026
Non-Final Rejection mailed — §112
Mar 23, 2026
Response Filed

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
71%
Grant Probability
71%
With Interview (+0.0%)
2y 8m (~1y 1m remaining)
Median Time to Grant
High
PTA Risk
Based on 1231 resolved cases by this examiner. Grant probability derived from career allowance rate.

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