DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicant’s election without traverse of Group I in the reply filed on March 6, 2026 is acknowledged.
3. The election of species requirement is withdrawn. The full scope of the elected group was searched and examined.
4. Claims 13 and 14 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected subject matter. Election was made without traverse in the reply filed on March 6, 2026.
Information Disclosure Statement
5. The information disclosure statements (dated December 19, 2024 and May 13, 2025) were in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The statements were considered. Signed copies of form 1449 are enclosed herewith.
Status of Claims
6. Claims 1-15 are pending. Claims 1-12 are elected. Claims 1 and 12 are independent.
Claim Objections
7. Claims 7 and 11 are objected to because of the following informality: the claims are missing a period.
8. Claims 7 and 11 are objected to because of the following informality: compounds in the claims are cut off. See lines 1 and 3 on claim 7 and lines 1, 5 and 6 on claim 11.
Claim Rejections - 35 USC § 112
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.
9. Claim 8 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 claim recites a definition for variable Y4. However, the Markush formula does not contain a variable Y4. It is unclear whether the definition is extraneous and unnecessary, or whether the Markush formula provided in the claim is incorrect.
Claim 10 recites the limitations "A, m, Ra.” There is insufficient antecedent basis for this limitation in the claim. These variables are not recited in claim 8 which is the claim from which it depends.
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.
10. Claims 1-12 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3 and 12-15 of copending Application No. 18,992,933 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons provided below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claims 1 and 12 in the present application - claim 12 of the copending application, directed to compositions comprising compounds of formula IV (
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) anticipates the present claim which is directed to compounds of formula I: (
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), wherein the variables in IV and I have the same definition. Regarding claims 2-7 in the present application - compound
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in the copending application (eg. claim 13 therein) corresponds to the present claims in the following manner: R1=hydroxy; R2=alkoxy; R3=R4=R5=H; X=S; Y1-Y4=C; A in usubstituted. The compound corresponds to the first compound in claim 7, and the compound in claim 12. Regarding claims 8-12 in the present application - compound
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in the copending application (eg. claim 14 therein) corresponds to the present claims in the following manner: Y1-Y3=C; A is unsubstituted. The compound corresponds to the first compound of present claim 11.
Allowable Subject Matter
11. Claims 1-12 are novel and nonobvious over the prior art. The point of novelty is the specific structural requirements of Formula I. The closest prior art can be considered to be, for example, US 20200392077 and CID 8603565. US 20200392077 teaches compounds that are lipoxygenase inhibitors and have general structure
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wherein
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with specific embodiments of R3 being mono or bicyclic structures. The reference does not teach or suggests the present compounds that have a specific tricyclic ring structure. CID teaches
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, however, the compound has no utility. The closest references do not anticipate nor make obvious the present invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN JAE YOO whose telephone number is (571)272-9074. The examiner can normally be reached Mon-Fri 8-5.
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/SUN JAE YOO/Primary Examiner, Art Unit 1621
Prosecution Insights