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 .
Applicant’s amendments and remarks filed 7/1/03 have been received and reviewed. Claims 21-25 are now pending in this application.
Allowable Subject Matter
Claims 22-25 are allowed.
Double Patenting
Claim 21 is again rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12, 14-34 and 36 of U.S. Patent No. 11,643,417. The basis of this rejection is the same as given in the previous office action and is incorporated herein fully by reference. Applicants argue the recited treatment is not identical to the uses disclosed in the specification of the ‘417 patent because thee claims only recite three diseases out of may disclosed in the specification of the patent. However, the rejection is not based on the recited diseases being identical to those in the specification of the reference patent. These diseases are fully embraced by the teachings of the specification of the reference patent.
This rejection remains and is repeated below.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims simply claim the use disclosed in the specification of the ‘417 patent as a method of use claim. See Pfizer, 518 F.3d at 1363; Geneva, 349 F.3d at 1385. See Sun Pharmaceutical Industries v. Eli Lilly and Co., 611 F.3d 1381, 1389 (2010).
In AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014), the court explained that it is also proper to look at the disclosed utility in the reference disclosure to determine the overall question of obviousness in a nonstatutory double patenting context. See also Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008); Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F3d 1373, 1385-86, 68 USPQ2d 1865, 1875 (Fed. Cir. 2003).
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 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 mailing date of this final action.
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November 5, 2024
/BRUCK KIFLE/Primary Examiner, Art Unit 1624