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 .
Claim Status
Pursuant to Applicant’s election without traverse dated Feb. 29, 2025, claims 21, 25, 27, 28, 31-35, 38, and 40 are currently active and subject to examination. Claims 24, 26, 29, 36-37 and 39 are withdrawn.
Claim Objections- Maintained
Claim 21 is objected to because of the following informalities: The oxygen appears to be missing from this structure:
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. On page 5, “a represents O or 1” should be “a represents 0 or 1”.
Claim 35 is objected to because of the following informalities: the structures are not drawn with sufficiently black and clear lines and atom labels. For example:
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170
314
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386
620
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310
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.
Appropriate correction is required.
Objection to Specification- Maintained
A substitute specification including the claims is required pursuant to 37 CFR 1.125(a) because (A) the structures in claim 35 is not drawn with sufficiently black and clear lines and atom labels; (B) the structures on pages 11-12, 27-31, 57-58, and 70-78 are not drawn with sufficiently black and clear lines and atom labels. The numerous illegible structures and labels make it difficult to consider the application.
For example:
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268
420
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407
367
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(p. 11-12);
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427
403
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391
365
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371
549
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672
635
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p. 27-31.
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435
667
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416
340
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p. 57-58;
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422
697
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p. 70;
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223
741
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p. 71;
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146
572
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p. 72;
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725
721
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p. 75;
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794
641
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p. 76;
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688
707
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p. 77;
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348
680
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p. 78.
Claim Rejections- Withdrawn- Overcome by Amendment
The rejection of claims 21-23, 25, 27, 28, 31-35, 38, and 40 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite is withdrawn.
The rejection of claim 32 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form is withdrawn.
The rejection of claims 21-23, 25, 27-28, 32, 33, 35 and 40 under 35 U.S.C. 102(a)(1) as being anticipated by Cheng et al. (WO 2015043492 A1; of record IDS 12/22/2021 cite no. 1) is withdrawn.
The rejection of claims 21-23, 27, 31, 33, 35, 38, and 40 under 35 U.S.C. 102(a)(1) as being anticipated by Barda et al. (US 7,666,879 B2 is withdrawn.
The rejection of claim(s) 21, 22, 23, 27, 28, 31, 32, 33, 34, 35, and 40 under 35 U.S.C. 103 as being unpatentable over Cherian et al. (WO 2014088519 A1) in view of Cha et al. (WO 2011162515 A2) is withdrawn.
The rejection of claims 21, 32, 23, 27, 28, 38 and 40 under 35 U.S.C. 103 as being unpatentable over Chen et al. (US 7,709,518 B2) is withdrawn.
The above rejections were overcome by amendment.
Claim Rejections - 35 USC § 112(d) – New Grounds of Rejection Necessitated by Amendment
The following is a quotation of 35 U.S.C. 112(d):
“(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
“Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”
Claims 25, 32 and 35 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 25 fails to further limit the subject matter of claim 21 upon which it depends. Claim 21 has a limitation “optionally wherein Y2 represents NMe.” Claim 25 fails to further limit claim 21 because this is limitation is separated from the other limitations by “or” and the limitation is optional. Furthermore, the examiner notes that preferences are properly set forth in the specification and not in the claims (MPEP 2173.05(d)).
Claim 32 fails to include all the limitations of claim 21 upon which it depends. Claim 32 has Y2 is O but claim 21 does not allow Y2 is O.
Claim 35 fails to include all the limitations of claim 21 upon which it depends. Claim 21 says that Z is attached to the rest of the molecule by a covalent bond, while in this compound, it is attached via an NH group:
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. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Statutory Double Patenting- Previously Presented
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
The provisional rejection of claims 21, 25, 27, 28, 31-35, 38, and 40 under 35 U.S.C. 101 as claiming the same invention as that of claims 23, 26-31, 32-35 and 40 of copending Application No. 17/596,988 (reference application) is maintained. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Response to Arguments
The Applicant did not traverse the rejection and merely requested that it be held in abeyance (Remarks, p. 38). Therefore, the rejection is maintained.
Nonstatutory Double Patenting- Previously Presented
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
The provisional rejection of claims 21, 25, 27, 28, 31-35, 38, and 40 on the ground of nonstatutory double patenting as being unpatentable over claims 23, 26-31, 33-40 and 42 of copending Application No. 17/596,988 is maintained. Both claims are directed towards the same genus of compounds and list overlapping species.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
The Applicant argues that the copending Application is the same application number as the present Application (Remarks, p. 38-39). The examiner acknowledges the typographical error but does not find this argument persuasive because the Applicant was on notice of this rejection. Application no. 17/596,988 was referenced with the same claim numbers in the statutory double patenting rejection and the nonstatutory double patenting rejection was made in the corresponding office action rejecting Application no. 17/596,988.
Conclusion
No claim is found to be allowable.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HEATHER DAHLIN whose telephone number is (571)270-0436. The examiner can normally be reached 9-5.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Lundgren can be reached on (571) 272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HEATHER DAHLIN/Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629