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 . Claims 1-19, 26, 29 and 32 are pending in this application.
Response to Amendment
Applicant’s amendment filed 05/07/2026 in response to the previous Office Action (12/11/2025) is acknowledged. The obviousness type double patenting rejection of claims 1-19, 26, 29 and 32 (items 4 and 5) has been maintained. After further review of the recently allowed case 18/207,401, it is deemed necessary to include another obviousness type double patenting rejection. Note that applicants have filed a terminal disclaimer in 18/207, 401 to overcome the double patenting rejection over U.S. Patent No. 11,111,237 and U.S. patent No. 11,725,001. Said U.S. patents are the same patents cited in this instant case.
Election/Restrictions
Applicant’s election without traverse of Group I and species c. (i.e. Y = carbon) in the reply filed on 11/17/2025 is acknowledged. The Restriction Requirement dated 09/19/2025 was withdrawn previously.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-19, 26, 29 and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,111,237. Although the claims at issue are not identical, they are not patentably distinct from each other because there is significant overlap between the instant claims and claims 1-19 of U.S. Patent No. 11,111,237. Note that this case is a continuation of 17/102,871 (now U.S. Patent No, 11,111,237) is drawn to compound of Formula 1 and its pharmaceutical acceptable salt that is the same as the instant claims.
Response to arguments
Applicant’s argument filed 05/07/2026 has been fully considered but it is not persuasive.
Applicants traverse the rejection on the ground that “claims 1 and 29 are patentably distinct from claims 1 of US’237 and US’001”. Applicants further argue that “claims 1 and 29 do not recite an R1. Claim 1 recites -OR10 and claim 29 recites -C=R10……US’237 and US’001 recite an R1 comprising substitutions not recited in claims 1 and 29”. The examiner disagrees with applicant’s argument. The instant case is a continuation of 17/102,871 (now U.S. Patent No, 11,111,237) is drawn to compound of Formula 1 and its pharmaceutical acceptable salt that is the same as the instant claims. The definition of R1 in patents ‘237 and ‘001 overlap with the definition of O-R10 in claim 1. Since the specification of the parent case discloses the compound, pharmaceutically acceptable salt and the claimed composition the nonstatutory double patenting rejection is proper. Note that this case is a continuation case and not a divisional case that was restricted out from the original restriction. Applicant's argument would have been proper, if the claimed compounds was restricted out from the original restriction requirement. In order to overcome this rejection, the examiner recommends that applicants file a terminal disclaimer as it was done in the related case 18/207,401.
Claims 1-19, 26, 29 and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,725,001. Although the claims at issue are not identical, they are not patentably distinct from each other because there is significant overlap between the instant claims and claims 1-20 of U.S. Patent No. 11,725,001.
Response to arguments
Applicant’s argument filed 05/07/2026 has been fully considered but it is not persuasive.
Applicants traverse the rejection on the ground that “claims 1 and 29 are patentably distinct from claims 1 of US’237 and US’001”. Applicants further argue that “claims 1 and 29 do not recite an R1. Claim 1 recites -OR10 and claim 29 recites -C=R10……US’237 and US’001 recite an R1 comprising substitutions not recited in claims 1 and 29”. The examiner disagrees with applicant’s argument. The instant case is a continuation of 17/102,871 (now U.S. Patent No, 11,111,237) is drawn to compound of Formula 1 and its pharmaceutical acceptable salt that is the same as the instant claims. The definition of R1 in patents ‘237 and ‘001 overlap with the definition of O-R10 in claim 1. Since the specification of the parent case discloses the compound, pharmaceutically acceptable salt and the claimed composition the nonstatutory double patenting rejection is proper. Note that this case is a continuation case and not a divisional case that was restricted out from the original restriction. Applicant's argument would have been proper, if the claimed compounds was restricted out from the original restriction requirement. In order to overcome this rejection, the examiner recommends that applicants file a terminal disclaimer as it was done in the related case 18/207,401.
Claims 1-19, 26, 29 and 32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-40 of recently allowed copending Application No. 18/207,401. Although the claims at issue are not identical, they are not patentably distinct from each other because there is significant overlap between the instant claims and claims 21-40 of recently allowed copending Application No. 18/207,401.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kahsay Habte Ph.D. whose telephone number is (571)272-0667. The examiner can normally be reached on 8:30 - 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY MURRAY can be reached on 571-272-9023. 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 https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Kahsay Habte/
Primary Examiner, Art Unit 1624
May 11, 2026
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