DETAILED ACTION
Claims 18-33 are pending in the present reissue application.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 18-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 18, and 32-37 of U.S. Patent No. RE48,334. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 8 of the ‘334 patent claims compounds of the formula
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, where the sum of m and n is 2 or 3 such that ring A is a piperidine ring or a pyrrolidine ring, ring B is an optionally substituted aromatic ring, ring D is a 3,5-bis(trifluoromethyl)phenyl group or a 3,5-dichlorophenyl group, and L is a group represented by the formula
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.
Present reissue claims 18-27 claim compounds of the formula
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, where the sum of m and n is 2 or 3 such that ring A is a piperidine ring or a pyrrolidine ring, ring B is an optionally substituted aromatic ring (claims 19 and 20), ring D is a an optionally substituted aromatic ring including 3,5-bis(trifluoromethyl)phenyl group or a 3,5-dichlorophenyl group (claims 21 and 24), and L is a group represented by the formula
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(claims 25-27). Additionally, the definitions of R1 and R2 are the same for both the ‘334 patent and the present reissue claims (claims 22 and 23.) Therefore, claims 18-27 are anticipated by claim 8 of the ‘334 patent.
Claims 32-37 of the ‘334 patent are composition and method claims that are dependent on claim 18 of the ‘334 patent. Claim 18 of the ‘334 patent claims compounds of the formula
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184
228
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, where ring B is an optionally substituted aromatic ring, ring D is an optionally substituted phenyl ring or aromatic heterocyclic group, and L is a group represented by the formula
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.
Present reissue claims 18-27 claim compounds of the formula
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, where the sum of m and n is 2 or 3 such that ring A is a piperidine ring or a pyrrolidine ring, ring B is an optionally substituted aromatic ring (claims 19 and 20), ring D is an optionally substituted aromatic ring including 3,5-bis(trifluoromethyl)phenyl group or a 3,5-dichlorophenyl group (claims 21 and 24), and L is a group represented by the formula
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(claims 25-27). Additionally, the definition of R2 is the same for both the ‘334 patent and the present reissue claims (claim 23), and the definition of R1 includes the alkyl group substituted by a C-1-6 alkoxy group required by claim 18 of the ‘334 patent (claim 22). Claims 28-33 are composition and method claims as per claims 32-37 of the ‘334 patent. Therefore, claims 18-33 are anticipated by claims 18 and 32-37 of the ‘334 patent.
Claims 18-20, 22, 23, 26, and 28-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18 and 35-40 of U.S. Patent No. RE49,686. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 18 of the ‘686 patent claims compounds of the formula
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, where ring B is an optionally substituted aromatic heterocyclic group and ring D is an optionally substituted aromatic heterocyclic group excluding 6-quinolyl, R1 is a heterocyclic group, and R2 is a hydrogen atom, a halogenated C1-6 alkyl group, or an optionally substituted C3-6 cycloalkyl group. Claims 35-40 of the ‘686 patent are composition and method claims that are dependent on claim 18 of the ‘686 patent.
Present reissue claims 18-20, 22, 23, and 26 claim compounds of the formula
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, where the sum of m and n is 2 or 3 such that ring A is a piperidine ring or a pyrrolidine ring, ring B is an optionally substituted aromatic ring including pyridyl and thienyl (claims 19 and 20), ring D is a an optionally substituted aromatic ring (claim 21), and L is a group represented by the formula
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(claim 26). Additionally, the definition of R2 is the same for both the ‘334 patent and the present reissue claims (claim 23), and the definition of R1 includes the heterocyclic group required by claim 18 of the ‘686 patent (claim 22). Claims 28-33 are composition and method claims as per claims 35-40 of the ‘686 patent. Therefore, claims 18-20, 22, 23, 26, and 28-33 are anticipated by claims 18 and 35-40 of the ‘686 patent.
Response to Arguments
On page 9 of the remarks, the Applicant argues:
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However, the Applicant has not pointed to any specific deficiency in the nonstatutory double patenting rejections above. Therefore, the rejections are maintained for the reasons of record.
Duty to Disclose
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 8,592,454 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
Claims 18-33 are rejected.
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 Joseph Kosack whose telephone number is 571-272-5575. The examiner can normally be reached M-F 8:00-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Timothy Speer can be reached at 313-446-4825. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH R KOSACK/Patent Reexamination Specialist
Central Reexamination Unit 3991
Conferees:
/Alan Diamond/
Patent Reexamination Specialist
Central Reexamination Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991