DETAILED ACTION
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 5, 11-13, 16-18, 21, 22, 24, 25, 27-29, 31, 32, 34, 36-48, and 51-55 are cancelled. Therefore, claims 1-4, 6-10, 14, 15, 19, 20, 23, 26, 30, 33,35, 49 and 50 are currently pending in this Application.
Priority
CONTINUING DATA
This application is a 371 of PCT/US2022/019467 03/09/2022
PCT/US2022/019467 has PRO of 63249312 09/28/2021
PCT/US2022/019467 has PRO of 63158486 03/09/2021
Information Disclosure Statement
Applicant’s Information Disclosure Statements, filed on March 06, 2024 and February 11, 2025 has been considered. Please refer to Applicant’s copies of the 1449 submitted herewith.
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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1-4, 6-10, 14, 15, 19, 20, 23, 26, 30, 33, 35, 49 and 50 are rejected under 35 U.S.C. 102(a) as being anticipated by WO 2019/109069 A1 published June 06, 2019. The US equivalent is US Patent No. 11,661,441.
The instant invention is drawn to quinoxaline urea products of Formula I,
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as defined in claim 1. The dependent claim further limit the variables recited in Formula I. Claims 49 and 50 are drawn to method of use of products of the aforementioned products.
WO 2019/109069 A1 teach quinoxaline urea products of Formula
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and specific species that read on the products of the instant invention. Please, see the following:
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WO 2019/109069 A1 also teach the same method of use as claimed in claims 49 and 50. See paragraph [0036]
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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 §§ 706.02(l)(1) - 706.02(l)(3) 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-l.jsp.
Claims 1-4, 6-10, 14, 15, 19, 20, 23, 26, 30, 33, 35, 49 and 50 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,661,411, commonly assigned.
An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim is not patentably distinct from the reference claims because the examined claims are either anticipated by, or would have been obvious over, the reference claims.
Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims are directed to the same art specific subject matter. The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: quinoxaline urea products of Formula I,
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as defined in claim 1. The difference between the instant and the copending claims is in scope only. The claims are not identical, but there is significant overlap of subject matter. Furthermore, it should be noted that the variables in the formula of the patented claims have significant overlap, if not identical, to the instant corresponding variables.
MPEP 804 states : “where the claims of an application are not the "same” as those of the first patent, but the grant of a patent with the claims in the application would unjustly extend the rights granted by the first patent, a double patenting rejection under nonstatutory grounds is proper.”
Although the conflicting claims are not identical, the Examiner finds that a person having ordinary skill in the art would recognize that the claimed invention would unjustly extend the rights granted to U.S. Patent No. 11,661,411, because a hypothetical infringer of U.S. Patent No. 11,661,411 would necessarily be an infringer of the claimed invention. Accordingly, U.S. Patent No. 11,661,411 renders the instant claims obvious absent a showing of unpredictability or comparative evidence suggesting otherwise.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kamal A Saeed whose telephone number is (571)272-0705. The examiner can normally be reached Monday-Friday 9:00a-5:00p.
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, Adam C Milligan can be reached at (571)270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kamal A Saeed/
Primary Examiner, Art Unit 1626