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 .
Priority
This application is a national stage entry of PCT/JP2022/016648 filed on 03/31/2022. Acknowledgment is made of applicant's claim for foreign priority based on an application filed in JAPAN on 03/31/2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
Applicant’s preliminary amendment filed on March 26, 2024 amending claim 2 has been entered. Claims 1-7 are currently pending and presented for examination.
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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 10,906,879. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the instant application would be anticipated over the cited claims of the patent since the patent claims the same compounds as claimed in the instant claims. Even though the cited patent does not claim that the compounds are therapeutic agents for gait disturbance in a patient with ischemic disease, said compounds of the patent are inherently capable of performing the claimed intended use since a compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,655,218 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the instant application would be anticipated over the cited claims of the patent since the patent claims the same compounds as claimed in the instant claims. Even though the cited patent does not claim that the compounds are therapeutic agents for gait disturbance in a patient with ischemic disease, said compounds of the patent are inherently capable of performing the claimed intended use since a compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,152,009. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the instant application would be anticipated over the cited claims of the patent since the patent claims the same compounds as claimed in the instant claims. Even though the cited patent does not claim that the compounds are therapeutic agents for gait disturbance in a patient with ischemic disease, said compounds of the patent are inherently capable of performing the claimed intended use since a compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 19 of U.S. Patent No. 11,382,912. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the instant application would be anticipated over the cited claims of the patent since the patent claims the same compounds as claimed in the instant claims. Even though the cited patent does not claim that the compounds are therapeutic agents for gait disturbance in a patient with ischemic disease, said compounds of the patent are inherently capable of performing the claimed intended use since a compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 9, 22, 24 and 26 of U.S. Patent No. 10,821,108. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the instant application would be anticipated over the cited claims of the patent since the patent claims the same compounds as claimed in the instant claims. Even though the cited patent does not claim that the compounds are therapeutic agents for gait disturbance in a patient with ischemic disease, said compounds of the patent are inherently capable of performing the claimed intended use since a compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 10,828,298. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the instant application would be anticipated over the cited claims of the patent since the patent claims the same compounds as claimed in the instant claims. Even though the cited patent does not claim that the compounds are therapeutic agents for gait disturbance in a patient with ischemic disease, said compounds of the patent are inherently capable of performing the claimed intended use since a compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,284,280 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the instant application would be anticipated over the cited claims of the patent since the patent claims the same compounds as claimed in the instant claims. Even though the cited patent does not claim that the compounds are therapeutic agents for gait disturbance in a patient with ischemic disease, said compounds of the patent are inherently capable of performing the claimed intended use since a compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,440,931 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the instant application would be anticipated over the cited claims of the patent since the patent claims the same compounds as claimed in the instant claims. Even though the cited patent does not claim that the compounds are therapeutic agents for gait disturbance in a patient with ischemic disease, said compounds of the patent are inherently capable of performing the claimed intended use since a compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 8,629,145 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the instant application would be anticipated over the cited claims of the patent since the patent claims the same compounds as claimed in the instant claims. Even though the cited patent does not claim that the compounds are therapeutic agents for gait disturbance in a patient with ischemic disease, said compounds of the patent are inherently capable of performing the claimed intended use since a compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 8,729,086 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the instant application would be anticipated over the cited claims of the patent since the patent claims the same compounds as claimed in the instant claims. Even though the cited patent does not claim that the compounds are therapeutic agents for gait disturbance in a patient with ischemic disease, said compounds of the patent are inherently capable of performing the claimed intended use since a compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 8,889,693 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the instant application would be anticipated over the cited claims of the patent since the patent claims the same compounds as claimed in the instant claims. Even though the cited patent does not claim that the compounds are therapeutic agents for gait disturbance in a patient with ischemic disease, said compounds of the patent are inherently capable of performing the claimed intended use since a compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 4 of U.S. RE46,364 E. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the instant application would be anticipated over the cited claims of the patent since the patent claims the same compounds as claimed in the instant claims. Even though the cited patent does not claim that the compounds are therapeutic agents for gait disturbance in a patient with ischemic disease, said compounds of the patent are inherently capable of performing the claimed intended use since a compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 7,205,302 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the instant application would be anticipated over the cited claims of the patent since the patent claims the same compounds as claimed in the instant claims. Even though the cited patent does not claim that the compounds are therapeutic agents for gait disturbance in a patient with ischemic disease, said compounds of the patent are inherently capable of performing the claimed intended use since a compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 8,394,793 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the instant application would be anticipated over the cited claims of the patent since the patent claims the same compounds as claimed in the instant claims. Even though the cited patent does not claim that the compounds are therapeutic agents for gait disturbance in a patient with ischemic disease, said compounds of the patent are inherently capable of performing the claimed intended use since a compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 8,791,122 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the cited claims of the instant application would be anticipated over the cited claims of the patent since the patent claims the same compounds as claimed in the instant claims. Even though the cited patent does not claim that the compounds are therapeutic agents for gait disturbance in a patient with ischemic disease, said compounds of the patent are inherently capable of performing the claimed intended use since a compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Asaki et al. U.S. Publication No. 2004/0102436 A1 (Provided on IDS 10/26/2023).
Claims 1-7 of the instant application claim a therapeutic agent for gait disturbance in a patient with ischemic disease, comprising a heterocyclic derivative represented by formula (1) below or a pharmaceutically acceptable salt thereof as an active component:
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, such as 2-{4-[N-(5,6-diphenylpyrazine-2-yl)-N-isopropylamino]butyloxy}acetic acid or 2-{4-[N-(5,6-diphenylpyrazine-2-yl)-N-isopropylamino]butyloxy}-N-(methylsulfonyl)acetamide.
It is noted that if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPTQ2d 1161, 1165 (Fed. Cir. 1999).
In addition, it is respectfully pointed out that a recitation of an intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). In the instant case, a prior art which discloses the claimed compound of formula (1) will inherently be capable of performing the claimed intended use of being a therapeutic agent for gait disturbance in a patient with ischemic disease.
Asaki et al. discloses compounds of formula (1)
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96
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wherein Z represents N or CH and R1, R2, Y, A, D, E, G, R3, R4 and Q are the same as claimed in the instant claims (abstract, [0008]-[0019], and claims 1-14). Specific examples include 2-{4-[N-(5,6-diphenylpyrazine-2-yl)-N-isopropylamino]butyloxy}acetic acid ([0051], [0191], [0658]) and 2-{4-[N-(5,6-diphenylpyrazine-2-yl)-N-isopropylamino]butyloxy}-N-(methylsulfonyl)acetamide ([0080], [0220], [0793]). Asaki et al. specifically exemplifies Example 42 (2-{4-[N-(5,6-diphenylpyrazine-2-yl)-N-isopropylamino]butyloxy}acetic acid) and Example 84 (2-{4-[N-(5,6-diphenylpyrazine-2-yl)-N-isopropylamino]butyloxy}-N-(methylsulfonyl)acetamide) in the inhibition of platelet aggregation (Table 1 and Example 5 pages 35-36).
The cited claims of the instant application are anticipated since Asaki et al. discloses the same compounds as claimed in the instant claims and thus the compounds of Asaki et al. are inherently therapeutic agents for gait disturbance in a patient with ischemic disease including those patients as claimed in claims 3-4 and 6-7. A compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Where applicant claims a compound in terms of a function, property or characteristic and the compound of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, a rejection under 35 USC 102 is proper. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Thus the cited claims of the instant application are rejected over the cited prior art teachings.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kuwano U.S. Publication No. 2011/0105518 A1 (Provided on IDS 10/26/2023).
Claims 1-7 of the instant application claim a therapeutic agent for gait disturbance in a patient with ischemic disease, comprising a heterocyclic derivative represented by formula (1) below or a pharmaceutically acceptable salt thereof as an active component:
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, such as 2-{4-[N-(5,6-diphenylpyrazine-2-yl)-N-isopropylamino]butyloxy}acetic acid or 2-{4-[N-(5,6-diphenylpyrazine-2-yl)-N-isopropylamino]butyloxy}-N-(methylsulfonyl)acetamide.
It is noted that if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPTQ2d 1161, 1165 (Fed. Cir. 1999).
In addition, it is respectfully pointed out that a recitation of an intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In a claim drawn to a process of making, the intended use must result in a manipulative difference as compared to the prior art. See In re Casey, 152 USPQ (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). In the instant case, a prior art which discloses the claimed compound of formula (1) will inherently be capable of performing the claimed intended use of being a therapeutic agent for gait disturbance in a patient with ischemic disease.
Kuwano discloses compounds of formula (1)
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wherein R1, R2, Y, A, D, E, G, R3, R4, R5 and Q are the same as claimed in the instant claims (abstract, [0001]-[0014], and claims 2 and 8-9). Specific examples include 2-{4-[N-(5,6-diphenylpyrazine-2-yl)-N-isopropylamino]butyloxy}acetic acid and 2-{4-[N-(5,6-diphenylpyrazine-2-yl)-N-isopropylamino]butyloxy}-N-(methylsulfonyl)acetamide (claim 9).
The cited claims of the instant application are anticipated since Kuwano discloses the same compounds as claimed in the instant claims and thus the compounds of Kuwano are inherently therapeutic agents for gait disturbance in a patient with ischemic disease including those patients as claimed in claims 3-4 and 6-7. A compound and its properties are inseparable. In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705,709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Where applicant claims a compound in terms of a function, property or characteristic and the compound of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, a rejection under 35 USC 102 is proper. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Thus the cited claims of the instant application are rejected over the cited prior art teachings.
Conclusion
Claims 1-7 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARA R. MCMILLIAN whose telephone number is (571)270-5236. The examiner can normally be reached Tuesday-Friday 12:00 PM-6:00 PM.
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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/KARA R. MCMILLIAN/Primary Examiner, Art Unit 1623
KRM