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 .
Response to Restriction Requirement
Applicant's election with traverse of Group V in the reply filed on December 13, 2025 is acknowledged. The traversal is on the ground(s) that art was not available. This is not found persuasive because Breslin et al. (WO 02/36116) disclose compounds comprising the core of the compounds of the instant claims. R1 may be a C1-6 alky carbonyl, which encompasses the carbonyl of the instant claims. R2 may be a 5 membered heterocyclic ring where (a-3) (page 2) meets the center ring of the instant claims. This ring may be substituted with a phenyl, which meets the phenyl ring of the instant claims. Breslin differs from the instant claims insofar as the phenyl is not substituted. However, When chemical compounds have “very close” structural similarities and similar utilities, without more a prima facie case may be made. The necessary motivation to make the claimed compound, and thus the prima facie case of obviousness, arises from the reasonable expectation that compounds similar in structure will have similar properties. See MPEP 2144.08.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-4 and 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 December 13, 2025.
Claims
Claim Rejections - 35 USC § 112 – Indefiniteness
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 11-12 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.
The claims recite an oxalate compound. However, oxalate is a compound comprising 2 carbons (C) whereas compounds encompassed by the formula of claims 11-12 comprises a S in place of one of the C. Therefore fore it is unclear whether the claims are oxalates salts or oxalate derivatives where the compound has an oxalate functional group. Therefore the claims are indefinite.
Claim Rejections - 35 USC § 103 - Obviousness
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Breslin (WO 02/36116, already of record).
Breslin et al. disclose compounds comprising the core of the compounds of the instant claims.
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R1 may be a C1-6 alky carbonyl, which encompasses the carbonyl of the instant claims. R2 may be a 5 membered heterocyclic ring where (a-2) (page 2) meets the center ring of the instant claims.
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This ring may be substituted with a phenyl (R7), which meets the phenyl ring of the instant claims.
Breslin et al. differ from the instant claims insofar as the phenyl is not substituted. However, When chemical compounds have “very close” structural similarities and similar utilities, without more a prima facie case may be made. The necessary motivation to make the claimed compound, and thus the prima facie case of obviousness, arises from the reasonable expectation that compounds similar in structure will have similar properties. See MPEP 2144.08. Therefore it would have been obvious to have made the compound having a substituted phenyl, substituted with a methyl, because they are very close in structure and would therefore expected have similar utilities.
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Obvious Type 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.
1) Claims 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/279,872 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are coextensive insofar as they recite a chemical compound of substantially the same formula comprising the same three ring structure as the core and a functional group R that encompasses a group having optionally one S atom. The instant claims differ from the copending claims insofar as the copending claims are broader insofar as the copending claims recite a second compound with a different formula.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
2) Claims 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 18-19 of copending Application No. 17/769,198 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are coextensive insofar as they recite a chemical compound of substantially the same formula encompassing the same piperidine ring structure as the core and a functional group R that encompasses a group having optionally one S atom. The instant claims differ from the copending claims insofar as the copending claims are broader in scope insofar as the copending claims encompass more compounds with different ring structures attached to the piperidine ring.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
3) Claims 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-19 of copending Application No. 18/005425 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are coextensive insofar as they recite a chemical compound of substantially the same formula encompassing the same piperidine ring structure as the core and a functional group R that encompasses a group having optionally one S atom. The instant claims differ from the copending claims insofar as the copending claims are narrower in scope insofar as the copending claims encompass specific compounds in the independent claim. However, the compounds are recited in the dependent claims of the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
4) Claims 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/005404 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are coextensive insofar as they recite a chemical compound of substantially the same formula encompassing the same piperidine ring structure as the core and a functional group R that encompasses a group having optionally one S atom. The instant claims differ from the copending claims insofar as the instant claims are narrower in scope insofar as the copending claims encompass recites a smaller core in the independent claim. However, the core of the instant claims are recited in the dependent claims of the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
5) Claims 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-7 of copending Application No. 18/275,055 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are coextensive insofar as they recite a chemical compound of substantially the same formula encompassing the same piperidine ring structure as the core and a functional group R that encompasses a group having optionally one S atom. The instant claims differ from the copending claims insofar as the instant claims are narrower in scope insofar as the they further define the sulfur containing functional group.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 11-12 are rejected.
Claim 1-4 and 6-10 are withdrawn.
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEZAH ROBERTS whose telephone number is (571)272-1071. The examiner can normally be reached Monday-Friday 11:00-7:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEZAH ROBERTS/Primary Examiner, Art Unit 1612