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
This is a response to Applicant’s communication filed on November 10, 2025. Application No. 16/938,475, filed July 24, 2020, is Divisional of U.S. Nonprovisional Application No. 16/085,372, filed September 14, 2018, which is a 371 of PCT/EP2017/056461, filed March 17, 2017, and claims foreign priority to European Patent Office application No. (EPO) 16160988.8, filed March 17, 2016. In an amendment filed October 23, 2020, Applicant added claims 21-24. In an amendment filed March 23, 2021, Applicant cancelled claims 1-17, and 21; and added claims 25-35. In an amendment filed April 8, 2022, Applicant canceled claim 29 and added claims 36-39. In an amendment filed December 8, 2022, Applicant added claims 40 and 41. In an amendment filed July 17, 2023, Applicant added claims 42 and 43. In an amendment filed July 11, 2024, Applicant added new claims 44-50. In an amendment filed November 10, 2025, Applicant added new claims 51 and 52. Applicant’s elections without traverse of the invention of Group II and compound V150 as the elected compound species, in the reply filed on October 23, 2020, are acknowledged. Claim 43-49 are currently withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention. Claims 28, 30-32, 35, 37, 42, and 50 are currently withdrawn from further consid2734eration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species. Claims 18-20, 22-27, 33, 34, 36, 38-41, 51 and 52 are examined below
Rejections Withdrawn
The rejection of claims 18-20, 22, 33, and 36 under 35 U.S.C. 102(a)(1) as being anticipated by Hara et al., WO93/24442 A1, is withdrawn in view of Applicant’s November 10, 2025, Amendment & Remarks.
The rejection of claims 18-20, 22, 33, 36, 38 and 41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stivers et al., US2008/0020973 A1, is withdrawn in view of Applicant’s November 10, 2025, Amendment & Remarks.
New Rejection
Claim Rejections - 35 USC § 102(a)(1)
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.
Claims 18-20, 22, 33, 36, 38 and 41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pessel, Leopold, U.S. Patent No. 2,734,000. Pessel discloses the following compound and pharmaceutical composition (as broadly construed by the present invention) thereof:
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See Pessel, U.S. ‘000 patent, Col. 3., Ln. 40, “Meta (para-tertiary amylphenoxy) benzoic acid”.) This compound reads on a compound of general formula (I), wherein formula (I), X is an unsubstituted phenylene ring; Y is O; R6 is -OH; R1 is -C(CH3)2C2H5; and R2-R5 is hydrogen.
Rejections Maintained
Provisional Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
The provisional rejections of claims 18-20, 22-27, 33, 34, 36, 38-41, and 51-52 on the ground(s) of nonstatutory double patenting as being unpatentable over:
claims 1-26, 28, and 30-36 of copending Application No. 17/270,646;
claims 1-36 of copending Application No. 17/270,652;
claims 1-38 of copending Application No. 17/270,665; and
claims 1-21 of copending Application No. 18/064,576,
are maintained for reasons made of record. Applicant argues that these provisional rejections are traversed because (i) the provisional nonstatutory double patenting rejections are the only rejections remaining; and (ii) the instant application has an earlier patent term filing date than the co-pending applications.
In this case, these provisional rejections are not the only rejections remaining in this application. See the 35 U.S.C. 102(a)(1) Rejections above. Secondly, application No. 18/964,576, has an earlier filing date than the present application of February 24, 2017. With respect to co-pending Applications Nos.: 17/270,646; 17/270,652; and 17/270,665, the rejections will be maintained until a proper response is filed. See MPEP 1490. VI. D, Two or More Copending Applications.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented. However, with respect to application No. 18/064,576, a Notice of Allowance was issued on November 24, 2025. This rejection will no longer be provisional upon paying the issue fee.
Conclusion
No claims are allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY R ROZOF whose telephone number is (571)270-5992. The examiner can normally be reached on Monday - Friday, 9:00 a.m. -5:00 p.m..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached on (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TIMOTHY R ROZOF/
Primary Examiner, Art Unit 1625
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