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 .
DETAILED ACTION
Status of Claims
Claims 1-9, 11-21, and 27 are pending in the instant application. Claim 27 is new and drawn to the elected invention but does not embrace the elected species. Note that Applicant’s statement regarding the elected species being a tautomer is not found entirely persuasive since there is no evidence provided by Applicant to support this statement. Furthermore, the claims nor specification do not recite any language of “tautomers thereof” of the formula in claim 9. Thus, claims 1-8, 17-21, and 27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 9 and 11-16 is contained herein.
Previous Objections/Rejections
Any rejections or objections stated of record in the office action mailed on 1/2/2026 that are not explicitly addressed herein below, are hereby withdrawn in light of applicant's arguments and/or amendments filed 10/1/2025.
New Rejections
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 obviousness-type 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); 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 conflicting 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.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 9 and 11-16 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-10 of US Patent 11,666,562. Although the conflicting claims are not identical, they are not patentably distinct from each other because there is significant overlap between the two applications.
The method of treatment encompassing the genus structure of the instant application may fully encompass the compound of ‘562 used in the same method wherein X = CH, R1 = methyl, R2 = methoxy, R3,4 = H, and R5 = pyrrolo. The scope of the recited formula in claim 9 of the instant application is substantially small that one of ordinary skill would have readily arrived at the claimed species in '526.
It has been held that a prior art disclosed genus of useful compounds is sufficient to render prima facie obvious a species falling within a genus. In re Susi, 440 F.2d 442, 169 USPQ 423, 425 (CCPA 1971), followed by the Federal Circuit in Merck & Co. v. Biocraft Laboratories, 847 F.2d 804, 10 USPQ 2d 1843, 1846 (Fed. Cir. 1989).
Claims 9 and 11-16 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 2 of US Patent 10,765,687. Although the conflicting claims are not identical, they are not patentably distinct from each other because there is significant overlap between the two applications. The reasons being the same as in patent ‘526 wherein the compound in patent ‘687 has the limitation X = N, R1,3 = methyl, R2,4 = methoxy, and R5 = H.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 9 and 11-16 are rejected under 35 U.S.C. 103(a) as being unpatentable over Watanabe et al. Scientific Reports, 2020, 10, 4003-mentioned in IDS.
The scope of the claims may be drawn to methods of treating HIV-1 using the compounds in claim 9. The species Tenatoprazole may be embraced by the claims.
Watanabe et al. disclose prazole species such as Tenatoprazole and other related compounds that inhibit HIV-1 while suggesting their future use as antivirals (see abstract and page 11, last paragraph). Thus one skilled in the art would have a reasonable expectation of success in implementing the claimed method of use employing these prazoles disclosed in the art. Since the document suggests this method of treatment using the claimed compounds, any inherent limitations disclosed in the claims such as disruption of particular complexes, domains, etc. would have been inherently observed upon administration and do not make the method patentable.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624
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