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, 2, 32, 40, 52, 56, 60, 67, 70-75 and 80 are pending in the instant application.
Election/Restrictions
Applicant’s election with traverse of Group I,
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and the species of Compound (C008), disclosed on page 219 of the instant specification and in instant claim 67 on page 23 (reproduced below),
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in the reply filed on September 24, 2025 was acknowledged in the previous Office Action. The entire scope of products in elected Group I has been searched and examined. The requirement was deemed proper and therefore made FINAL in the previous Office Action.
Claims 71-75 and 80 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on September 24, 2025.
Rejections and objections made in the previous Office Action that do not appear below have been overcome by Applicant’s amendments to the specification and to the claims. Therefore, arguments pertaining to these rejections and objections will not be addressed.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on March 17, 2026 was filed after the mailing date of the non-final Office Action on
October 21, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 32 and 67 are objected to because of the following informalities:
in currently amended claim 32, there long lines in the middle of the definition of variable R13 (lines 14-15 of page 7); and
in currently amended independent claim 67, there are numerous chemical structures which are not completely legible and would pose a problem when printing (see, for instance, the compounds on the last row of page 14; the compound on row 5, column 2, on page 15; the compound on row 6 column 2, on page 20; etc.).
Response to Arguments
Applicant’s arguments filed January 20, 2026 have been fully considered. Applicant argues that claim 67 has been amended to the best available versions of the chemical structures. In response, some of the chemical structures in claim 67 are still not completely legible.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 32, 40, 52 and 56 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 32 is claiming different subgenera/groupings of compounds by defining the compound subgenera as i), ii), iii), etc. In these compound subgenera, some of the variables have different definitions. For example, in compound subgenera iii), R12 and R14 do not represent a hydrogen but in compound genera iv) (line 6 of the claim), R12 and R14 each represent only a hydrogen (bottom of page 8). Therefore, claim 32 is indefinite. See claim 40, claim 52 and claim 56 for same.
Response to Arguments
Applicant’s arguments filed January 20, 2026 have been fully considered. Applicant argues that the claims have been amended by replacing “and/or” with “or” in claims 32, 40, 52 and 56. In response, the rejection to claims 32, 40, 52 and 56 has not been overcome by Applicant’s amendments to the claims. As stated above, these claims are claiming different subgenera/groupings of compounds by defining the compound subgenera as i), ii), iii), etc. but these compound subgenera have different variables definitions. It has not been made clear in any of these amended claims that only one scenario at a time can apply by separating each subgenera/grouping with an “or”. Further, the “and/or” in claim 52 was not changed to an “or”. The rejection is deemed proper and therefore, the rejection is maintained.
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 1, 2, 32, 40, 52, 56, 60, 67 and 70 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable:
over claims 1, 2, 11, 20, 27, 28, 30, 35, 36, 39, 42, 43, 49, 53, 58 and 60-63 of copending Application No. 18/833,710 (reference application), US 2025/0241908;
over claims 1, 20, 24, 27, 31, 32, 35, 36, 41, 58, 61 and 63-66 of copending Application No. 18/287,158 (reference application), US 2024/0226094; and
over claims 1-18 of copending Application No. 19/036,564 (reference application), US 2025/0163008.
Although the claims at issue are not identical, they are not patentably distinct from each other because each of the copending applications claim methods which use compounds that anticipate or render obvious the instant claimed invention.
Copending Application No. 18/833,710 claims a method of using a compound that anticipates the instant claimed invention. See claim 27 and especially the compound in column 1, row 4 on page 23 in claim 60 of copending Application No. 18/833,710, which is the elected species in the instant application of Compound (C008) in instant claim 67 on page 23 (column 1, row 6).
Copending Application No. 18/287,158 claims a method of using a compound that anticipates the instant claimed invention. See claim 41 and especially the compound in column 2, row 4 on page 14 in claim 61 of copending Application No. 18/287,158, which is the elected species in the instant application of Compound (C008) in instant claim 67.
Copending Application No. 19/036,564 claims a method of using a compound of Formula (I), which compound of Formula (I) is the elected species in the instant application of Compound (C008) in instant claim 67.
The instant application and each of the copending applications share at least one common inventor. Further, the instant application is not related to any of the copending applications and thus, no 35 USC 121 shield exists here. See MPEP §804.01. Therefore, the claims in each of the above cited copending applications anticipate and/or render obvious the instant claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments filed January 20, 2026 have been fully considered. Applicant argues that the Examiner should withdraw the above provisional nonstatutory double patenting rejection because the instant application has the earlier patent term filing date.
In response, since the provisional nonstatutory double patenting rejection is not the only remaining rejection in the instant application, the provisional nonstatutory double patenting rejection is maintained.
The elected species of Compound (C008), disclosed on page 219 of the instant specification and in instant claim 67, is not allowable. See the nonstatutory double patenting rejection above.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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.
This application contains claims 71-75 and 80 drawn to an invention nonelected with traverse in the reply filed on September 24, 2025. A complete reply to the final rejection must include cancellation of nonelected claims or other appropriate action (37 CFR 1.144) See MPEP §821.01.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to:
Laura L. Stockton
(571) 272-0710.
The examiner can normally be reached on Monday-Friday from 8:30 am to 6 pm, Eastern Standard Time.
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 acting supervisor,
James Alstrum-Acevedo can be reached on 571/272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LAURA L STOCKTON/ Primary Examiner, Art Unit 1626 Work Group 1620
Technology Center 1600
April 3, 2026
Book XXVIII, page 259
Prosecution Insights