DETAILED ACTION
Claims 1-19 are currently pending in the instant application. Claims 1-7, 9, 10, 12, and 17-19 are rejected. Claims 8, 11, and 13-16 are withdrawn from consideration as being for non-elected subject matter.
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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 25 February 2026 has been entered.
Election/Restrictions
Applicant’s election without traverse of group I and the species of compound 28, see example 6:
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in the reply filed on 15 May 2025 has been previously acknowledged.
According to MPEP 803.02, the examiner has determined whether the elected species is allowable. Applicants’ elected species does not appear allowable (see the following provisional non-statutory double patenting rejections). However, in order to expedite prosecution, the search and examination has now been extended to the compound:
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which is not allowable. Claims 1-7, 9, 10, 12, and 17-19 have been examined to the extent that they are readable on the elected embodiment, the elected species and the above mentioned compound. Claims 8, 11 and 13 of elected group I do not read on the elected embodiment and are therefore withdrawn.
Response to Amendment and Arguments
Applicant's amendment and arguments filed 5 February 2026 have been fully considered and entered into the instant application.
Applicant’s amendment to delete “the entire contents of which are incorporated by reference herein” has overcome the objection to the specification.
In regards to the Provisional Nonstatutory Double patenting rejections over US Application No. 18/264,189 and US Application No. 18/689,680, Applicant requests withdrawn of these rejections as US Application No. 18/264,189 and US Application no. 18/689,680 are later filed applications and there would not be an unwarranted extension of patent term in view of the claims of the copending applications. Firstly, it is noted that the method claims of the conflicting applications provide the elected species as in the instant claims. Conflicting claims to methods of use provide anticipation of claims to the product utilized. Additionally, as seen in MPEP 804 I.B. and 804 I.B.1.(b).(i)
B. Between Copending Applications—Provisional Rejections
An examiner may become aware of two or more copending applications which share the same inventive entity, at least one common (joint) inventor, a common applicant, and/or a common owner/assignee, or that claim an invention resulting from activities undertaken within the scope of a joint research agreement as defined in 35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) and (3), that would raise an issue of double patenting if one of the applications became a patent. Where this issue can be addressed without violating the confidential status of applications (35 U.S.C. 122 ), the courts have sanctioned the practice of making applicant aware of the potential double patenting problem if one of the applications became a patent by permitting the examiner to make a provisional rejection on the ground of double patenting. In re Mott, 539 F.2d 1291, 190 USPQ 536 (CCPA 1976); In re Wetterau, 356 F.2d 556, 148 USPQ 499 (CCPA 1966). An application that was published under 35 U.S.C. 122(b) without redactions can be utilized as a double patenting reference without violating the confidential status required by 35 U.S.C. 122. An unpublished application, or an application that has been published as redacted, can be utilized as a double patenting reference without violating the confidential status required by 35 U.S.C. 122 when it has at least one common (joint) inventor, applicant, assignee, or owner, or is deemed commonly owned (35 U.S.C. 102(c) or pre-AIA 35 U.S.C. 103(c)(2) ) with the application under examination. See MPEP §§ 2136.01 and 2154.01(d) for information on provisional rejections based on prior art. The merits of such a provisional rejection can be addressed by both the applicant and the examiner without waiting for the first patent to issue.
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A provisional double patenting rejection should be made and maintained by the examiner until the rejection has been obviated or is no longer applicable except as noted below.
(i) Application under examination has the earlier patent term filing date
If a provisional nonstatutory double patenting rejection is the only rejection remaining in an application having the earlier patent term filing date, the examiner should withdraw the rejection in the application having the earlier patent term filing date and permit that application to issue as a patent, thereby converting the provisional nonstatutory double patenting rejection in the other application into a nonstatutory double patenting rejection upon issuance of the patent.
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As the provisional nonstatutory double patenting rejections are proper and are not the only rejections remaining, the rejections are maintained.
Applicant’s amendment filed 5 February 2026 amending the definition of R2 has overcome the 35 USC 103 rejection.
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, 3-7, 9, 10, 12, and 17-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3-7, and 9-16 of copending Application No. 18/264,189 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims are drawn to methods of inhibiting or ameliorating spinocerebellar ataxia type 3 with compounds of the formula (I) (conflicting claim 1), wherein R1 is thiophenyl (conflicting claims 3-5), wherein R2 is C1-3 alkyl, such as propyl, wherein the C1-6alkyl contains a chiral carbon in the (S) configuration (conflicting claims 6, 7 and 9), with conflicting claims 10 and 11 claiming methods utilizing the elected species:
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, and with conflicting claims 12 and 13 claiming methods utilizing salts of the elected species. Conflicting method of use claims anticipate the product utilized in the methods.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-7, 9, 10, 12, and 17-19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3-7, and 9-17 of copending Application No. 18/689,680 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims are drawn to methods for treating a neurodegenerative disease characterized by the accumulation of aberrant forms of the microtubule associated protein Tau (MAPT) with compounds of the formula (I) (conflicting claim 1), wherein R1 is thiophenyl (conflicting claims 3-5), wherein R2 is C1-3 alkyl, such as propyl, wherein the C1-6alkyl contains a chiral carbon in the (S) configuration (conflicting claims 6, 7 and 9), with conflicting claims 10 and 11 claiming methods utilizing the elected species:
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, and with conflicting claims 12 and 13 claiming methods utilizing salts of the elected species. Conflicting method of use claims anticipate the product utilized in the methods.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
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.
Claim 2 is 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. Specifically, claim 1 defines variable R1 as:
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wherein R1 is optionally substituted with one, three, or four R1a substituents. Instant claim 2 defines R1 as:
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which allows R1 to be substituted with two R1a substituents which is outside the scope of parent claim 1 and therefore claim 2 fails to limit parent claim 1.
. 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.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Registry No. 1349454-03-0.
Registry No. 1349454-03-0 is:
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. Registry No. 1349454-03-0 corresponds to the instant formula (I) of claim 2:
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, for example, wherein R1 is aryl (specifically phenyl) substituted with two R1a substituents; R1a is halo; R4 is hydrogen; R3 is hydrogen; and R2 is C1alkyl substituted with 2 R2a substituetns wherein one instance of R2a is oxo and the other instance is heterocyclyl-amino wherein the heterocyclyl is substituted with one R2a’ substituent wherein R2a’ is C1alky.
Registry number 1349454-03-0 is available as prior art as of 06 Dec 2011 the date it was indexed into the CAplus database.
See MPEP 2128: ELECTRONIC PUBLICATIONS AS PRIOR ART Status as a "Printed Publication" An electronic publication, including an on-line database or Internet publication, is considered to be a “printed publication” within the meaning of 35 U.S.C. 102(a) and (b) provided the publication was accessible to persons concerned with the art to which the document relates. See In re Wyer, 655 F.2d 221, 227, 210 USPQ 790, 795 (CCPA 1981) Since this date represents the date that each compound entered the CAPlus database on STN, this represents the date that each compound was made accessible to the public.
The aforementioned compound anticipates the instantly claimed compounds: It is further noted that for the purposes of determining if a reference is a “printed publication” for the purposes of 102(b), MPEP 2128 states the following:
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where “prior art disclosures…on an on-line database are considered to be publicly available as of the date the item was publicly posted.” Since each of the database entries above lists the date that each compound was entered into the on-line database, the compounds were made publicly available as of that date in each citation, and the claims are anticipated.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA L ANDERSON whose telephone number is (571)272-0696. The examiner can normally be reached Monday-Friday from 6am-2pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REBECCA L ANDERSON/Primary Examiner, Art Unit 1626 ____________________ 10 March 2026
Rebecca Anderson
Primary Examiner
Art Unit 1626, Group 1620
Technology Center 1600