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 .
Continued Examination Under 37 CFR 1.114
The request for continued examination was filed on 10/29/2025.
Withdrawn Rejection(s)
The rejections under 35 USC 112, second paragraph, and 35 USC 103 over Yang are withdrawn in view of the amendments and remarks filed 10/29/2025.
Maintained Rejection(s)
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.
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Claims 1-8, and 13-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 17791423 (‘423) in view of Yang et al. (US20100151388).
‘423 teaches the polymerized monomers which are instantly claimed and wherein the polymer is mixed with/comprises the same additional polymers as are instantly claimed and wherein antimicrobial monomers instantly claimed are polymerized to form antimicrobial polymers which are effective against the claimed gram-negative or gram-positive bacteria and wherein the disclosed L, R1-R5 in ‘423 read on the instantly claimed hydrogen atoms which correspond to R2 and R3 in ‘423, L in ‘423 corresponds to L in the claimed compounds, R1 in ‘423 corresponds to the instantly claimed R and R4 and R5 in ‘423 correspond to the instantly claimed R1 and R2. Thus, the polymer of ‘423 is made up of the instantly claimed antimicrobial compounds/monomers and because it is made up of the same compounds instantly claimed, the polymer of the claimed compounds would obviously have the claimed properties claimed in instant claims 4-8, and the polymer of ‘423 reads on the claimed composition of instant claims 9 and 10, specifically as ‘423 teaches that their polymer containing the claimed monomers can further comprise the polymers claimed in instant claim 10.
‘423 does not claim the method of making the monomers which form their polymer of the claimed monomers, as is instantly claimed in claims 11-12. However, this deficiency in ‘423 is addressed by Yang.
Regarding claims 1-9, Yang broadly teaches applicant’s compounds and teaches examples which are homologous to the claimed compounds, e.g. formula Id (See [0010-0015]; [0032-0044]). As Yang broadly teaches the claimed compounds and specifically teaches homologous compounds, specifically formula Id which only differs in that it has a tbutyl group instead of the instantly claimed isopropyl, wherein R1 and R2 are both methyl groups or sec butyl wherein one of R1 or R2 is an ethyl group and the other is a methyl group, etc. Thus, Yang’s compounds would have the instantly claimed properties because their compounds overlap with those instantly claimed because Yang clearly teaches that their Ra can be an unsubstituted or substituted alkyl group, and they specifically define alkyl to be C1-C10, and as such the alkyl group is not limited to the exemplified tbutyl group (See [0032-0033]; [0034-0042]; claims; [0006]; [0002]; abstract; [0010-0015]). Regarding the claimed antibacterial growth inhibition rates measured via the claimed methods and/or deodorization rates of various compounds, specifically the newly claimed diacetyl or dimethyl sulfide of claim 8 measured using the claimed methods of the claimed compounds, these are properties of the claimed compounds and it is known, "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. Further with respect to instant claims 4-8, these claims are all directed to compounds but are not actually claiming the compounds but instead are directed to the intended use of the claimed compounds and as such these claims are being afforded patentable weight beyond the claimed compound scope of claim 1.
Regarding claim 9, Yang broadly teaches the claimed compounds in polymers, and as the claimed compounds are all that is required by applicants compositions of claim 9, Yang’s compounds which broadly read on the claimed compounds and/or are homologous to the claimed compounds as discussed above and the polymers comprising these compounds as taught by Yang render the instant compounds obvious will also render obvious the instant compositions ([0045, formula 4]; [0046-0054]; claims; [0032-0033]; [0034-0042]; [0056-0057]).
Regarding claim 10, Yang teaches wherein their compositions can further comprise acrylic acid monomers, which read on the claimed polyacrylic acid as claimed ([0045, formula 4]; [0046-0054]; claims; [0032-0033]; [0034-0042]).
Regarding claim 11, Yang teaches methods of preparing homologous compounds to those instantly claimed, specifically wherein the substituents on the piperidine ring are para to each other wherein the reaction materials are similar to those instantly claimed, specifically chemical formula 3 is the same as is instantly claimed and chemical formula 2 is a positional isomer of the compound disclosed in Yang and further differs in that it has a tbutyl group instead of the instantly claimed CHR1R2 (See preparation example 1). However, as Yang clearly discloses compounds of the instant formula 1 and exemplifies homologous compounds to those instantly claimed as discussed above one of ordinary skill in the art would be motivated to start with the claimed chemical formula 2 wherein Ra is the claimed isopropyl group wherein the instant R1 and R2 are methyl for instance in order to achieve compounds having the instantly claimed formula 1 because Yang teaches that they envision forming/using compounds wherein the substituents on the piperidine are ortho to one another as claimed (See for instance formula 1d, See [0032-0033]; [0034-0042]; claims; [0006]; [0002]; abstract; [0010-0015]).
Regarding claim 12, Yang teaches wherein in their related method to producing structurally similar molecules further comprises the claimed step(s) of extracting a reaction material from the reaction of chemical formula 2 and chemical formula 3, purifying the reaction material, etc. as claimed (See preparation example 1).
It would have been obvious to form the claimed compounds via the instantly claimed method with compounds of formula 2 and formula 3 as claimed because it was known to react the positional isomer compounds of applicants formula 2 with the same formula 3 in order to form the structurally similar compounds wherein the substituents on the piperidine are para to one another as taught by Yang and it is known, “Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.” In reWilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
As discussed above Yang already broadly teaches the claimed compounds and specifically teaches that their Ra- does not have to be the tbutyl group disclosed in preparation example 3 but can be any C1-C10 alkyl group which includes wherein the claimed CHR1R2 would have R1 and R2 as methyl or one of R1 or R2 as ethyl and the other as methyl, etc. as claimed and they exemplify the homologous compound 1d as discussed above. Thus, it would be obvious to use the method disclosed in Yang to make the compounds instantly claimed because this method can be readily used to form compounds such as the disclosed 1d of Yang which is homologous to the claimed compounds and Yang already teaches that their Ra- does not have to be the tbutyl group disclosed in preparation example 3 of in compound/formula 1d but can be any C1-C10 alkyl group which includes the claimed CHR1R2, wherein R1 and R2 are both methyl or one of R1 or R2 is ethyl and the other is methyl, etc. It would have been obvious to use this method to form the claimed monomers which are also taught to be polymerized to form the related/obvious polymer of copending ‘423. One of ordinary skill in the art would want to use this synthetic method because it is a known effective transformation which is already used to form structurally similar and/or homologous compounds as is taught/broadly taught by Yang as discussed above. Thus, one of ordinary skill in the art would conclude that the claimed compounds, compositions and methods are obvious when taken in view of copending application 17791423 and Yang.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments/Remarks
Applicants have made no arguments concerning the obviousness-type double patenting except to ask that it be held in abeyance. The rejection is maintained.
Conclusion
No claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS A AZPURU whose telephone number is (571)272-0588. The examiner can normally be reached 9 am- 3 pm, 4 pm-8pm.
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/CARLOS A AZPURU/Primary Examiner, Art Unit 1617 caz