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 .
Status of the Application
This Office Action is in response to Applicant's Restriction Requirement remarks filed on August 25, 2025. Claim(s) 176-188, 193, and 194 are pending. Claim(s) 179, 182, 186, 187, and 189-192 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant's election of Group I drawn to a compound of formula I and election of species of:
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, without traverse of the restriction requirement in the reply is acknowledged. The requirement is deemed proper and is therefore made FINAL. Claim(s) 176-178, 180, 181, 183-185, 188, 193, and 194 are examined herein insofar as they read on the elected invention and species. The elected species was found free of the art, therefore the search was expanded to a genus encompassing the elected specie.
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 claims at issue 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 reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
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.
Claims 176-178, 180, 181, 183-185, 188, 193, and 194 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,246,436. Although the conflicting claims are not identical, they are not patentably distinct from each other because the instant claims are to compounds of formula I and pharmaceutical compositions thereof. The patented claims are drawn to a specific compound that is embraced by Formula I of the instant invention. Claims 1-4 and 15-18 of the patented claims are drawn to said compound and the compositions thereof. Claims 5-14 are drawn to methods of treatment thereof. While the instant claims are product claims, they must have utility as they are intended to result in utility patents. In order to understand the utility of the compounds, Examiner went to the specification for guidance. Since the scope of the composition of the instant invention encompasses the composition of said patent and their utilities are the same, then the instant application is obvious over said patent.
Claims 176-178, 180, 181, 183-185, 188, 193, and 194 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,465,980. Although the conflicting claims are not identical, they are not patentably distinct from each other because the instant claims are to compounds of formula I and pharmaceutical compositions thereof. The patented claims are drawn to a specific compound that is embraced by Formula I of the instant invention. Claims 1-13 and 16 of the patented claims are drawn to said compound and the compositions thereof. Claims 14-15 are drawn to methods of treatment thereof. While the instant claims are product claims, they must have utility as they are intended to result in utility patents. In order to understand the utility of the compounds, Examiner went to the specification for guidance. Since the scope of the composition of the instant invention encompasses the composition of said patent and their utilities are the same, then the instant application is obvious over said patent.
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.
Claims 176-178, 180, 181, 183-185, 188, 193, and 194 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Homan (Molecular Pharmacology, 2013) of record.
Homan discloses a structural and functional analysis of G protein-coupled receptor kinase inhibition by paroxetine and a rationally designed compound, CCG-205584 (page 238, Figure 1) and pharmaceutical compositions thereof (page 239, column 1, 1st full paragraph):
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.
Compound CCG-206584 is a compound of Formula I as claimed in the instant claim 1 and pharmaceutical compositions thereof (instant claim 34), or Formula V as claimed in the instant claim 2, wherein Z is O (instant claim 8); R41 absent (instant claim 10); one of R36 or R37 is hydrogen and the other is F (instant claim 11); q is 0 (instant claim 16); R61 is H (instant claim 25); R35 is H and R34 is:
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wherein Xa is C; R39 is H; R40 is H; and R42 is H (instant claim 22).
Therefore, based on the foregoing reasons, the instant claims are deemed anticipated over the cited art.
Claims 176-178, 180, 181, 183-185, 188, 193, and 194 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Larsen (WO 2016/210403) of record.
Larsen teaches a compound of Formula I and pharmaceutical compositions thereof (claim 1):
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Larsen specifically teaches (claim 41; [0019]):
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Based on the foregoing reasons, the instant claims are deemed anticipated over the cited art.
Claims 176-178, 180, 181, 183-185, 188, 193, and 194 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Patil (Indian Drugs, 1998).
Patil teaches compounds of formula I and pharmaceutical compositions thereof.
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Based on the foregoing reasons, the instant claims are deemed anticipated over the cited art.
Conclusion
Claims 176-178, 180, 181, 183-185, 188, 193, and 194 are not allowed.
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAHAR JAVANMARD whose telephone number is (571)270-3280. The examiner can normally be reached on Monday-Friday, 9:00-5:00 EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Acevedo-Alstrum can be reached on 571-272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/SAHAR JAVANMARD/Primary Examiner, Art Unit 1627