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 office action is in response to Applicant’s Amendment and Response to Restriction/Election Requirement filed on 7/14/2025, where no claim amendments accompany the response.
Claims 1-3, 12, 21, 29-31, 34, 35, 38, 39, 41, 43, 45, 46, 53-55 and 60 are pending in the instant application.
Election/Restrictions
Applicants’ election, without traverse, for the invention of Group I drawn to a cannabinoid glycoside, encompassing claims 1-3, 12, 21, 29, 39 and 41, in the reply filed on 7/14/2025 is acknowledged.
Applicants’ election, without traverse, for the subgenus of formula (I) where A=A’:, encompassing claims 1-3, 29, 39 and 41, in the reply filed on 7/14/2025 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Claims 30, 31, 34, 35, 38, 43, 45, 46, 53-55 and 60 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention.
Claims 12 and 21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species.
Claims 1-3, 29, 39 and 41 will be examined on the merits herein.
Priority
The application is a divisional application of 15/762,180, filed on 3/22/2018, now US 11,207,414, which is the national stage application of PCT/US2016/053122 filed on 9/22/2016, which claims priority to provisional applications 62/363,808, filed on 7/18/2016, 62/245,928, filed on 10/23/2015 and 62/222,144, filed on 9/22/2015.
Information Disclosure Statement
The information disclosure statements (IDS) dated 11/16/2021, 2/10/2022, 6/24/2022, 9/11/2023 comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609, except where noted. Accordingly, the IDS documents have been placed in the application file and the information therein has been considered as to the merits.
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 1-3, 29, 39 and 41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka et al. (Plant Cell Reports, 1996, IDS).
Tanaka et al. discloses compounds with the following structures (Figure 1):
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593
520
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.
Compounds 2 and 3 of Tanaka anticipate formula (I), where:
A=
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, G = H or Glc and R=R’=H.
With respect to claims 39 and 41, it is noted that Tanaka does not teach that the composition can be used in the manner instantly claimed. However, the cited recitations are considered an “intended use” of the claimed composition. The “intended use” of the claimed composition does not patentably distinguish the composition, per se, since such disclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting.
Accordingly, the instant claims are anticipated by the prior art.
Claims 1-3, 29, 39 and 41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka et al. (For. Sci. Inter., 1999, IDS).
Tanaka et al. discloses compounds with the following structures (Figure 1):
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598
668
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.
Compounds delta6-THC-monoglucoside, CBN-monoglucoside, CBD-monoglucoside and CBD-diglucoside of Tanaka anticipate formula (I), where:
A=
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123
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,
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455
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; G = H or Glc and R=R’=H.
With respect to claims 39 and 41, it is noted that Tanaka does not teach that the composition can be used in the manner instantly claimed. However, the cited recitations are considered an “intended use” of the claimed composition. The “intended use” of the claimed composition does not patentably distinguish the composition, per se, since such disclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting.
Accordingly, the instant claims are anticipated by the prior art.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-3, 29, 39 and 41 of the instant application are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over US 11,207,414. Although the conflicting claims are not identical, they are not patentably distinct from each other because the compounds administered in the method of ‘414 are identical to the claimed compounds. In order to practice the method of ‘414 one must be in possession of the instantly claimed compounds, rendering the claim to such compounds an obvious variation of ‘414.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DALE R MILLER whose telephone number is (571) 272-6146. The examiner can normally be reached on M-F 7:00 AM – 3:30 PM EST.
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/DALE R MILLER/Primary Examiner, Art Unit 1693