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
Claim Status
Claims 7, 29-32, 39-40 and 44 are pending. Claims 30-32 are withdrawn. Claims 7, 29, 39-40 and 44 are under examination in their entirety. Claims 7, 29 and 39-40 are rejected. Claim 44 is objected to. No claims allowed.
Filing Receipt filed 05/22/2023
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Response to Amendments/Arguments
Applicant's amendments and arguments filed 01/21/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below in original or modified form is herein withdrawn.
The following two modified nonstatutory double patenting rejections constitute the complete set of rejections and/or objections presently being applied to the instant application.
Response to Arguments
Applicant's arguments filed 01/21/2026 have been fully considered but they are not persuasive.
Applicant argues because of a large number of combinations encompassed by variables R1-R4 of the current compound, one of ordinary skill in the art would not be able, upon reading the claims of the cited patents, to envisage at once the specific compounds.
Additionally, applicant argues the claimed compounds exhibit advantageous biological properties.
Concerning the large number of combinations of variables R1 to R4, the original rejection utilized the lead compound (S)-2-(3,3-difluoro-1-hydroxycyclobutyl)-N-(1-(3-(trifluoromethoxy)phenyl)ethyl)acetamide as seen immediately below.
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Variables R1-R2 are defined as instantly claimed. Therefore, there are no large combinations to choose from within variables R1 to R2.
Variable R4 is narrowly defined in the patents of record as OCF3, OCH2CF3, OCHF2 and CF3. This is not a large amount of combinations to choose from.
Variable R3 is defined in all three patents as follows.
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The alkoxylated version for R3 over the strictly alkyl version of R3 limits the choices of the R3 variable considerably. Additionally, the choice of fluorinated over the unfluorinated alkoxylated alkyl greatly reduces the choices of the R3 variable. With regards to the fluorinated alkoxylated version of variable R3, there are not so numerous combinations that would preclude one of ordinary skill from choosing the claimed CH2OCHF2.
With regards to the advantageous biological properties, applicant compares the EC50 values achieved with compounds having an alkoxylated fluorinated alkyl to an alkoxylated cyclopropyl in the R3 position. This is not an apples to apples comparison. To show the superiority of a fluorinated alkyl over an unsubstituted alkyl, one would have utilized the identical alkyl without fluorine substitutions.
Moreover, the patents of record test for the EC50 and show variations depending on the substituents. Expecting larger and/or smaller EC50 values when substituting variables would have been necessarily expected. The ordinary artisan practicing the inventions of the patents of record would have been well aware of the variations of the EC50 values associated with fluorinated and unfluorinated alkoxylated alkyls.
For the reasons stated above the obviousness rejection is maintained/modified as set forth below.
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 7, 29 and 39-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 U.S. Patent No. 10,590,067 (Rottlander et al.). The modifications to this rejection were necessitated by amendment.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, Rottlander et al. claims the following compounds. See next page.
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Concerning claim 29, Rottlander et al. does not claim the claimed compounds in pharmaceutical compositions with pharmaceutically acceptable excipients.
However, the ordinary artisan wanting to utilize the patented invention would have been in need of the scope of the utility of the patented compounds. The ordinary artisan in need of the scope would have looked to the specification for examples of utilities, and would have found “Administration Routes:” in column 6.
The Administration Routes can include pharmaceutical compositions that are specifically formulated. These formulations can have pharmaceutically acceptable excipients.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Concerning the compound of claim 39 and 7 (R)-2-(3,3-difluoro-1-
hydroxycyclobutyl)-N-(2-(difluoromethoxy)-1-(3-(difluoromethoxy)phenyl)ethyl)
acetamide seen immediately below
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,Rottlander claims (S)-2-(3,3-difluoro-1-hydroxycyclobutyl)-N-(1-(3-
(trifluoromethoxy)phenyl)ethyl)acetamide as seen immediately below.
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The difference from the current compound to the patented compound is as follows.
R3 of the patented compound is a CH3 whereas the claimed compound is CH2O-CHF2
R4 of the patented compound is a OCF3 whereas the claimed compound is OCHF2.
To remedy these discrepancies, Rottlander claims R4 is OCHF2 in claim 1 and R3 can be CH2OC1-3 substituted with 1 or 2 fluorine in claim 1. The amount of specie in the genus CH2OC1-3 substituted with 1 or 2 fluorine is limited so that the claimed specie would have been obvious to try.
It would have been obvious to have made the above patented modifications to the
patented compound of claim 8 to arrive at the current compound of claims 7 and 39 with
a reasonable expectation of success. The ordinary artisan would have done so because the initial claimed compound is interpreted to be a lead compound and the modifications to arrive at the current compound are claimed in the patent.
Concerning the stereochemistry, the structure of Formula 1 of claim 1 of Rottlander encompasses the currently claimed stereochemistry. Additionally, to understand the scope of the compounds encompassed by the patented claims, the ordinary artisan would have looked to the patented specification and found the section “Isomeric and Tautomeric forms:” in column 8. This section renders the claimed stereochemistry obvious.
Concerning claim 40 and 7, and compound (R)-2-(3,3-difluoro-1-hydroxycyclobutyl)-N-(2-(difluoromethoxy)-1-(3-(trifluoromethoxy)phenyl)ethyl) acetamide, seen immediately below
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, Rottlander claims (S)-2-(3,3-difluoro-1-hydroxycyclobutyl)-N-(1-(3-(trifluoromethoxy)phenyl)ethyl) acetamide as seen immediately below.
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The difference from the current compound to the patented compound is as follows.
R3 of the patented compound is CH3 whereas the claimed compound is CH2O-CHF2
To remedy this discrepancy, Rottlander claims R3 can be CH2OC1-3 substituted with 1 or 2 fluorine in claim 1. The amount of specie in the genus CH2OC1-3 substituted with 1 or 2 fluorine is limited so that the claimed specie would have been obvious to try.
It would have been obvious to have made the above patented modifications to the patented compound of claim 8 to arrive at the current compound of claim 40 with a reasonable expectation of success. The ordinary artisan would have done so because the initial claimed compound is interpreted to be a lead compound and the modifications to arrive at the current compound are claimed in the patent.
Concerning the stereochemistry, the structure of Formula 1 of claim 1 of Rottlander encompasses the currently claimed stereochemistry. Additionally, to understand the scope of the compounds encompassed by the patented claims, the ordinary artisan would have looked to the patented specification and found the section “Isomeric and Tautomeric forms:” in column 8. This section renders the claimed stereochemistry obvious.
Claims 7, 29 and 39-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 U.S. Patent No. 11,434,199 (Rottlander et al.). The modifications to this rejection were necessitated by amendment.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, Rottlander et al. claims the following.
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Rottlander et al. does not claim the currently claimed compounds, rather a method of use. However, the ordinary artisan practicing the invention of Rottlander et al. would have necessarily utilized the currently claimed compounds in pharmaceutical compositions with pharmaceutically acceptable excipients.
Concerning claim 29, Rottlander et al. does not claim the claimed compounds in pharmaceutical compositions with pharmaceutically acceptable excipients.
However, the ordinary artisan wanting to practice the patented invention would have been in need of the scope of the claimed administering of the patented compounds thereof. The ordinary artisan in need of the scope of the claimed administration of the claimed compounds would have looked to the specification for examples of administering the patented compounds, and would have found “Administration Routes:” in column 6.
Concerning the compound of claim 39 and 7 (R)-2-(3,3-difluoro-1-
hydroxycyclobutyl)-N-(2-(difluoromethoxy)-1-(3-(difluoromethoxy)phenyl)ethyl)
acetamide seen immediately below
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,Rottlander claims (S)-2-(3,3-difluoro-1-hydroxycyclobutyl)-N-(1-(3-(trifluoromethoxy)phenyl)ethyl)acetamide as seen immediately below.
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The difference from the current compound to the patented compound is as follows.
R3 of the patented compound is a CH3 whereas the claimed compound is CH2O-CHF2
R4 of the patented compound is a OCF3 whereas the claimed compound is OCHF2.
To remedy these discrepancies, Rottlander claims R4 is OCHF2 in claim 1 and R3 can be CH2OC1-3 substituted with 1 or 2 fluorine in claim 1. The amount of specie in the genus CH2OC1-3 substituted with 1 or 2 fluorine is limited so that the claimed specie would have been obvious to try.
It would have been obvious to have made the above patented modifications to the
patented compound of claim 8 to arrive at the current compound of claims 7 and 39 with
a reasonable expectation of success. The ordinary artisan would have done so because the initial claimed compound is interpreted to be a lead compound and the modifications to arrive at the current compound are claimed in the patent.
Concerning the stereochemistry, the structure of Formula 1 of claim 1 of Rottlander encompasses the currently claimed stereochemistry. Additionally, to understand the scope of the compounds encompassed by the patented claims, the ordinary artisan would have looked to the patented specification and found the section “Isomeric and Tautomeric forms:” in column 8. This section renders the claimed stereochemistry obvious.
Concerning claim 40 and 7, and compound (R)-2-(3,3-difluoro-1-hydroxycyclobutyl)-N-(2-(difluoromethoxy)-1-(3-(trifluoromethoxy)phenyl)ethyl) acetamide, seen immediately below
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, Rottlander claims (S)-2-(3,3-difluoro-1-hydroxycyclobutyl)-N-(1-(3-(trifluoromethoxy)phenyl)ethyl) acetamide as seen immediately below.
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The difference from the current compound to the patented compound is as follows.
R3 of the patented compound is CH3 whereas the claimed compound is CH2O-CHF2
To remedy this discrepancy, Rottlander claims R3 can be CH2OC1-3 substituted with 1 or 2 fluorine in claim 1. The amount of specie in the genus CH2OC1-3 substituted with 1 or 2 fluorine is limited so that the claimed specie would have been obvious to try.
It would have been obvious to have made the above patented modifications to the patented compound of claim 8 to arrive at the current compound of claim 40 with a reasonable expectation of success. The ordinary artisan would have done so because the initial claimed compound is interpreted to be a lead compound and the modifications to arrive at the current compound are claimed in the patent.
Concerning the stereochemistry, the structure of Formula 1 of claim 1 of Rottlander encompasses the currently claimed stereochemistry. Additionally, to understand the scope of the compounds encompassed by the patented claims, the ordinary artisan would have looked to the patented specification and found the section “Isomeric and Tautomeric forms:” in column 8. This section renders the claimed stereochemistry obvious.
Claims 7, 29 and 39-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 U.S. Patent No. 12,258,305 (Rottlander et al.)
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, Rottlander et al. claims the following.
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Rottlander et al. does not claim the currently claimed compounds, rather a method of use. However, the ordinary artisan practicing the invention of Rottlander et al. would have necessarily utilized the currently claimed compounds in pharmaceutical compositions with pharmaceutically acceptable excipients.
Concerning claim 29, Rottlander et al. does not claim the claimed compounds in pharmaceutical compositions with pharmaceutically acceptable excipients.
However, the ordinary artisan wanting to practice the patented invention would have been in need of the scope of the claimed administering of the patented compounds thereof. The ordinary artisan in need of the scope of the acclaimed administration of the claimed compounds would have looked to the specification for examples of administering the patented compounds, and would have found “Administration Routes:” in column 6.
The Administration Routes can include pharmaceutical compositions that are specifically formulated. These formulations can have pharmaceutically acceptable excipients.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
The Administration Routes can include pharmaceutical compositions that are specifically formulated. These formulations can have pharmaceutically acceptable excipients.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the copending subject matter.
Allowable Subject Matter
Claim 44 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The compound (R)-2-(3,3-difluoro-1-hydroxycyclobutyl)-N-(1-(3-( difluoromethoxy)phenyl)-2-(trifluoromethoxy)ethyl)acetamide is allowable.
See below depiction of the allowable compound.
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The closest prior art to the invention is ‘STN(STN 02 Apr 2018, 1 page, Published 04-2018). As cited in the non-final mailed 01/16/2025.
STN disclose the immediately below compound.
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The compound of the prior art does not disclose or fairly suggest the current variable R3, R4 and R1-R2.
It would not have been obvious to have modified the prior art to arrive at the current invention. There being no motivation to do so.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLAINE G DOLETSKI whose telephone number is (571)272-2766. The examiner can normally be reached M-F 7-4 EST.
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/B.G.D/Examiner, Art Unit 1692 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625