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 .
Applicants' arguments, filed July 3, 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Response to Arguments
The Examiner submits that although oxalate is not recited by the copending claims, when looking to the specification of the copending claims to determine the scope of formula (I), the copending specification includes salts and solvates. Oxalate is a salt. Therefore, the copending claims would also encompass salts such as oxalate. Therefore, the rejection is maintained.
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.
Response to Arguments
The Examiner submits that although oxalate is not recited by the copending claims, the copending claims recite salts and solvates. Oxalate is a salt. Therefore, the copending claims would also encompass salts such as oxalate. Therefore, the rejection is maintained.
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.
Response to Arguments
The Examiner submits that although oxalate is not recited by the copending claims, oxalate is a salt. Salt of compounds are often considered equivalents in pharmaceutical compositions with some variation. Therefore, salts of compounds are obvious. Therefore, the copending claims would also encompass salts such as oxalate. Therefore, the rejection is maintained.
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.
Response to Arguments
The Examiner submits that although oxalate is not recited by the copending claims, oxalate is a salt. Salt of compounds are often considered equivalents in pharmaceutical compositions with some variation. Therefore, salts of compounds are obvious. Therefore, the copending claims would also encompass salts such as oxalate. Therefore, the rejection is maintained.
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.
Response to Arguments
The Examiner submits that although oxalate is not recited by the copending claims, the copending claims recite salts and solvates. Oxalate is a salt. Therefore, the copending claims would also encompass salts such as oxalate. Therefore, the rejection is maintained.
Conclusion
Claims 11-12 are rejected.
Claim 1-4 and 6-10 are withdrawn.
No claims allowed.
THIS ACTION IS MADE FINAL. 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.
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.
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, 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
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