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
Claims 1-6, 9-44, 47 and 48 are currently pending in the instant application. Applicants have amended claims 1, 34-37, 40 and 47 in an amendment filed on December 9, 2025. Claims 1-6, 9-44, 47 and 48 are rejected in this Office Action.
I. Information Disclosure Statement
The information disclosure statements (IDS) submitted on October 27, 2025 and November 28, 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
II. Response to Arguments/Remarks
Applicants’ amendment, filed on December 9, 2025, has overcome the rejection of claims 1, 9, 12-14, 16, 36-38 under 35 USC 102(a)(1) as being anticipated by Gillard, et al. (EP 304156 (abstract)); the rejection of claims 1, 9, 1-14, 16, 36-38 under 35 USC 102(a)(1) as being anticipated by Guindon, et al. (EP 300676 (abstract)); the rejection of claims 1, 4, 9, 12-16, 36-38 under 35 USC 102(a)(1) as being anticipated by Guindon, et al. (EP 234708 (abstract)); the rejection of claim 35 under 35 USC 112(b) as being indefinite for being drawn to a different invention than the claim that it depends on; the rejection of claims 36 and 39 under 35 USC 112(b) as lacking antecedent basis for the limitation “the active ingredient”; the rejection of claims 34-35, 37, 38, 40-42 and 47-48 for not being enabled for the full scope of the claimed invention. The above rejections have been withdrawn.
Applicants amendment does not overcome the ODP rejection of claims. Since Applicants have not filed a terminal disclaimer, the rejection has been maintained.
III. 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 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 1-6, 9-44, 47 and 48 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-44 of U.S. Patent No. 12,084,419. Although the conflicting claims are not identical, they are not patentably distinct from each other because:
Applicants claim
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793
723
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470
614
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Determining the Scope and Content of the Issued Patent
Claim 1 of the issued patent claims
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718
845
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813
413
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Ascertaining the Differences Between the Instant Application and the Issued Patent
The instant application claims a compound of formula I that is broader and encompasses the compound of formula I in the issued patent’s claims.
Finding Prima Facie Obviousness
The genus compound of the instant application encompasses the narrower genus compound of the patented claims 1-44. The scope of the compounds in the patented claims 1-6, 9-44, 47 and 48 and the scope of the claims 1-44 of the instant application overlap and include patented subject matter in the instant claims. Therefore, one of ordinary skill in the art would be motivated to prepare and claim the scope of the compounds in the issued patent again in the instant application since the scope already patented falls within the full scope of the instant claims 1-6, 9-44, 47 and 48. As a result, the claims are rejected under obviousness-type double patenting.
IV. Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shawquia Jackson whose telephone number is (571)272-9043. The examiner can normally be reached on M-F 7AM-4PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Milligan can be reached on (571) 270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/SHAWQUIA JACKSON/Primary Examiner, Art Unit 1626