DETAILED ACTION
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Amendment
The amendment of 10 November 2025 has been entered.
Disposition of claims:
Claims 1, 6-7, 17, and 19-20 have been amended.
Claims 1-20 are pending.
The amendments to claims 6-7 have overcome the rejection of claims 6-7 under 35 U.S.C. 112(b) set forth in the last Office action. The rejection has been withdrawn.
The amendments to claims 1, 17, and 20 have overcome the rejections of claims 1-8, 11-13, and 17-19 under 35 U.S.C. 103 as being unpatentable over Ko et al. (US 2019/0027699 A1) (hereafter “Ko”) set forth in the last Office action as well as the rejection of claim 20 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Ko et al. (US 2019/0027699 A1) (hereafter “Ko”) in view of Baldo (US 6,097,147) (hereafter “Baldo”) set forth in the last Office action. The rejections have been withdrawn.
Claim Objections
Claim 19 is objected to because of the following informalities: The mark-up of the amendments to the claim are unclear. The compounds which have been removed and the compounds that have been added are not clear. Additionally, the final three compounds of the claim appear to remain and lack good resolution, making them difficult to read. Appropriate correction is required.
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 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.
Claims 1-8 and 11-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 17/656,234 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1-8 and 11-14: Claim 12 of copending Application No. 17/656,234 discloses the compound shown below {p. 330}.
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This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
The indicated allowability of claim 14 is withdrawn in view of the newly cited reference, Claim 12 of copending Application No. 17/656,234. Rejections based on the newly cited reference(s) are outlined above.
Claims 9-10 and 15-16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
As outlined in the Office action of 13 August 2025, Ko et al. (US 2019/0027699 A1) (hereafter “Ko”) is the closest prior art. The teachings of Ko do not encompass any of the structure of the current claims 9-10 or 15-16. The structures required by Ko do not permit any of the structures of the current claims 9-10 or 15-16 to be formed. Additionally, the prior art does not teach modifying the compounds of Ko to have a structure consistent with the compounds of claims 9-10 or 15-16.
Claims 17-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
As outlined in the Office action of 13 August 2025, Ko et al. (US 2019/0027699 A1) (hereafter “Ko”) is the closest prior art. The teachings of Ko do not encompass any of the structure of the current claims 17-20. The structures required by Ko do not permit any of the structures of the current claims 17-20 to be formed. Additionally, the prior art does not teach modifying the compounds of Ko to have a structure consistent with the compounds of claims 17-20.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DYLAN CLAY KERSHNER whose telephone number is (303)297-4257. The examiner can normally be reached M-F, 9am-5pm (Mountain).
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/DYLAN C KERSHNER/ Primary Examiner, Art Unit 1786