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 1-6, 10, 14-19, 21, 46-48, 52 and 53 are currently pending in the instant application. Applicants have amended claims 6, 10, 15, 16, 19, 21, 46-48 and 52 and canceled claims 7-9, 11-13, 20, 22-45 and 49-51 in an amendment filed on September 1, 2023. Claims 1, 4, 15-19, 21, 46-48, 52 and 53 are rejected and claims 2-3, 5, 6, 10 and 14 are objected in this Office Action.
I. Priority
The instant application is a 371 of PCT/US22/18391, filed on March 1, 2022 which claims benefit of US Provisional Application 63/155,226, filed on March 1, 2021.
II. Information Disclosure Statement
The information disclosure statement (IDS) submitted on September 1, 2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
III. Rejections
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless -
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4, 15-19, 21, 46-48, 52 and 53 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Manning, et al. (WO 2020/252353 A1) . The instant invention claims
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The Manning, et al. reference teaches amino acid transport inhibitors such as
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(See page 15, compound 47) wherein Ar1 is phenyl. This species of compound anticipates the genus compound of the instant invention, wherein the genus structure and its definitions are stated above.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 4, 15-19, 21, 46-48, 52 and 53 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 3, 5, 6, 7, 12, 13 and 18-26 of copending US application 17/618,829. This is a provisional obviousness-type double patenting rejection. Although the conflicting claims are not identical, they are not patentably distinct from each other because:
Applicants’ elected subject matter is
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Determining the Scope and Content of the Copending Application
Claim 1 of the copending application claims
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Ascertaining the Differences Between the Instant Application and the Copending Application
The claims of the instant application are drawn to a narrower compound genus
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that is encompassed by the broader compound genus
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of the copending application’s claims. The copending application claims the species
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which reads on the instant claimed compounds.
Finding Prima Facie Obviousness
As mentioned above, the genus compound of the copending application encompasses the narrower genus compound in the instant application’s claims 1, 4, 15-19, 21, 46-48, 52 and 53. The further limiting claim 19 in the copending application contains the species
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which reads on the scope of the elected subject matter of the claims 1, 4, 15-19, 21, 46-48, 52 and 53 in the instant application. The scope of the compounds in the claims 1, 3, 5, 6, 7, 12, 13 and 18-26 of the copending application and the scope of the elected subject matter of claims 1, 4, 15-19, 21, 46-48, 52 and 53 of the instant application overlap and include subject matter of the copending application in the claims of the instant application. Therefore, one of ordinary skill in the art would be motivated to prepare and claim the scope of the compounds in the instant application since the scope already in the copending application is encompassed by the scope of the elected subject matter in the instant claims 1, 4, 15-19, 21, 46-48, 52 and 53. As a result, the claims are rejected under obviousness-type double patenting.
IV. Objections
Dependent Claim Objections
Dependent Claims 2-3,5,6,10 and 14 are objected to as being dependent upon a rejected based claim. To overcome this objection, Applicant should rewrite said claims in an independent form and include the limitations of the base claim and any intervening claim.
Claim Objections
Claim 14 is objected to because of the following informalities: claim 14 should have the term “and” in between the last two structures listed in the claim. Appropriate correction is required.
V. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shawquia Jackson whose telephone number is 571-272-9043. The examiner can normally be reached on 7:00 AM-3:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Joseph McKane can be reached on 571-272-0699. 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 http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/SHAWQUIA JACKSON/ Primary Examiner, Art Unit 1626