Prosecution Insights
Last updated: May 29, 2026
Application No. 18/290,604

PROCESSES OF MAKING ONAPRISTONE AND INTERMEDIATES THEREOF

Non-Final OA §102§112§DOUBLEPATENT
Filed
Jan 19, 2024
Priority
Jul 19, 2021 — CN PCT/CN2021/107099 +1 more
Examiner
COLEMAN, BRENDA LIBBY
Art Unit
1624
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Tyligand Bioscience (Shanghai) Limited
OA Round
1 (Non-Final)
75%
Grant Probability
Favorable
1-2
OA Rounds
0m
Est. Remaining
90%
With Interview

Examiner Intelligence

Grants 75% — above average
75%
Career Allowance Rate
1208 granted / 1617 resolved
+14.7% vs TC avg
Strong +16% interview lift
Without
With
+15.7%
Interview Lift
resolved cases with interview
Typical timeline
2y 4m
Avg Prosecution
34 currently pending
Career history
1656
Total Applications
across all art units

Statute-Specific Performance

§101
2.8%
-37.2% vs TC avg
§103
9.5%
-30.5% vs TC avg
§102
12.3%
-27.7% vs TC avg
§112
49.8%
+9.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1617 resolved cases

Office Action

§102 §112 §DOUBLEPATENT
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 1, 2, 5, 16, 17, 21, 24, 25, 32, 38, 41, 42, 45, 47, 48, 57, 62, 63, 69, 70, 76 and 77 are pending in this application. 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. Claims 1, 2, 5, 16, 17, 21, 24, 25, 32, 38, 41, 42, 45, 47, 48, 57, 62, 63, 69, 70, 76 and 77 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 following reasons apply: Claim 1 and claims dependent thereon are vague and indefinite in that it is not known what is meant by the definition of R1 and R2 which includes the moiety where each is independently a “bond” which is divalent. However, R1 and R2 are monovalent. Claim 16 and claims dependent thereon are vague and indefinite in that it is not known what is meant by the definition of R1 and R2 which includes the moiety where each is independently a “bond” which is divalent. However, R1 and R2 are monovalent. Claim 24 and claims dependent thereon are vague and indefinite in that it is not known what is meant by the definition of R1 and R2 which includes the moiety where each is independently a “bond” which is divalent. However, R1 and R2 are monovalent. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 24 recites the broad recitation R5 is trialkylsilyl or trialkylsilyloxy, and the claim also recites R5 is trialkylsilyl which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claim 32 is vague and indefinite in that it is not known what is meant by “at least one bases”. Claim 38 recites the limitation "CH2-OR4" in the structure of formula (IV) with respect to the definition of R5. There is insufficient antecedent basis for this limitation in the claim. Claim 38 is vague and indefinite in that it is not known what is meant by the definition of R1 and R2 which includes the moiety where each is independently a “bond” which is divalent. However, R1 and R2 are monovalent. Claim 41 recites the limitation "Formula (V)" in which is said to be prepared according to the process of claim 24, however, there is no Formula (V) in claim 24. There is insufficient antecedent basis for this limitation in the claim. Claim 47 is vague and indefinite in that it is not known what is meant by the definition of R1 and R2 which includes the moiety where each is independently a “bond” which is divalent. However, R1 and R2 are monovalent. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 48 recites the broad recitation R1 and R2 are each independently optionally substituted C1-C6 alkyl, and the claim also recites R1 and R2 are each independently Me, Et, Pr, or Bu which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 48 recites the broad recitation R1, R2, X1, and X2 are together with the carbon atom connected to X1 and X2 to form optionally substituted 4-, 5-, 6-, 7-, or 8-membered cyclic ketal, and the claim also recites R1, R2, X1, and X2 are together with the carbon atom connected to X1 and X2 to form optionally substituted 5- or 6-membered cyclic ketal which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 48 recites the broad recitation R1, R2, X1, and X2 are together with the carbon atom connected to X1 and X2 to form optionally substituted 5- or 6-membered cyclic ketal, and the claim also recites R1, R2, X1, and X2 are together with the carbon atom connected to X1 and X2 to form optionally substituted 5-membered cyclic ketal which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 48 recites the broad recitation R5 is trialkylsilyl, and the claim also recites R5 is trimethylsilyl (TMS), triethylsilyl (TES), tert-butyldimethylsilyl (TBS), tert- butyldiphenylsilyl (TBDPS), or triisopropylsilyl (TIPS) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 48 recites the broad recitation R5 is trimethylsilyl (TMS), triethylsilyl (TES), tert-butyldimethylsilyl (TBS), tert- butyldiphenylsilyl (TBDPS), or triisopropylsilyl (TIPS), and the claim also recites R5 is triisopropylsilyl (TIPS) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 48 recites the broad recitation R5 is trialkylsilyloxy, and the claim also recites R5 is trimethylsilyloxy (OTMS), triethylsilyloxy (OTES), tert-butyldimethylsilyloxy (OTBS), tert- butyldiphenylsilyloxy (OTBDPS), or triisopropylsilyloxy (OTIPS) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 48 recites the broad recitation R5 is trimethylsilyloxy (OTMS), triethylsilyloxy (OTES), tert-butyldimethylsilyloxy (OTBS), tert- butyldiphenylsilyloxy (OTBDPS), or triisopropylsilyloxy (OTIPS), and the claim also recites R5 is triisopropylsilyloxy (OTIPS) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claim 41 recites the limitation "-CH2-OTIPS" in Formula (IV-a) with respect to R5. There is insufficient antecedent basis for this limitation in the claim. Claim 62 is vague and indefinite in that it is not known what is meant by the definition of R1 and R2 which includes the moiety where each is independently a “bond” which is divalent. However, R1 and R2 are monovalent. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 63 recites the broad recitation R1 and R2 are each independently optionally substituted C1-C6 alkyl, and the claim also recites R1 and R2 are each independently Me, Et, Pr, or Bu which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 63 recites the broad recitation R1, R2, X1, and X2 are together with the carbon atom connected to X1 and X2 to form optionally substituted 4-, 5-, 6-, 7-, or 8-membered cyclic ketal, and the claim also recites R1, R2, X1, and X2 are together with the carbon atom connected to X1 and X2 to form optionally substituted 5-membered cyclic ketal which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claim 69 is vague and indefinite in that it is not known what is meant by the definition of R1 and R2 which includes the moiety where each is independently a “bond” which is divalent. However, R1 and R2 are monovalent. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 70 recites the broad recitation R1 and R2 are each independently optionally substituted C1-C6 alkyl, and the claim also recites R1 and R2 are each independently Me, Et, Pr, or Bu which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 70 recites the broad recitation R1, R2, X1, and X2 are together with the carbon atom connected to X1 and X2 to form optionally substituted 4-, 5-, 6-, 7-, or 8-membered cyclic ketal, and the claim also recites R1, R2, X1, and X2 are together with the carbon atom connected to X1 and X2 to form optionally substituted 5-membered cyclic ketal which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claim 76 is vague and indefinite in that it is not known what is meant by the definition of R1 and R2 which includes the moiety where each is independently a “bond” which is divalent. However, R1 and R2 are monovalent. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 77 recites the broad recitation R1 and R2 are each independently optionally substituted C1-C6 alkyl, and the claim also recites R1 and R2 are each independently Me, Et, Pr, or Bu which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 77 recites the broad recitation R1, R2, X1, and X2 are together with the carbon atom connected to X1 and X2 to form optionally substituted 4-, 5-, 6-, 7-, or 8-membered cyclic ketal, and the claim also recites R1, R2, X1, and X2 are together with the carbon atom connected to X1 and X2 to form optionally substituted 5-membered cyclic ketal which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. 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)(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. (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claim(s) 47, 48, 62 and 63 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Teutsch et al., U.S. Patent No. 4,519,946. Teutsch (see Formula II) teaches the compounds of the instant invention, i.e., Formula (XI) where R1 is methyl; R2 is methyl; X1 is O and X2 is O as set forth in Example 6, Step C (Reg. No. 91934-75-7); Formula (XI) where R1, R2, X1, and X2 taken together form a 1,2-ethanediyl-bisoxy as set forth in Example 17, Step B (Reg. No. 91934-95-1); and Formula (X) where R1, R2, X1, and X2 taken together form a 1,2-ethanediyl-bisoxy and R5 is trimethylsilyl (TMS) as set forth in Example 29, Step A (Reg. No. 91935-15-8). The applicant’s attention is drawn to members of the patent family where claimed subject matter is involved where indicated. U.S. Patent No. 4,386,085 (claim 18); U.S. Patent No. 4,447,424; U.S. Patent No. 4,634,695; U.S. Patent No. 4,978,657; and U.S. Patent No. 5,043,332. Claim(s) 1, 2 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Neef et al., Tetrahedron Letters. Neff teaches the process of preparing the compounds of Formula (II) where R1, R2, X1, and X2 taken together form a 2,2-dimethyl-1,3-propanediyl-bisoxy and R3 is CH3 as set forth in the process with starting material 11e (9748-62-0 and 93748-61-9) and the product 1 (93748-56-2, 93748-55-14, 93748-43-2 and 93748-54-0). Claim(s) 62 and 63 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Neef et al., Steroids. Neff teaches the compounds of Formula (XI) where R1, R2, X1, and X2 taken together form a 2,2-dimethyl-1,3-propanediyl-bisoxy (96285-38-0 and 96346-57-5). Claim(s) 69 and 70 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rohde et al., U.S. Patent No. 4,609,651. Rohde teaches the compounds of Formula (V) where R1, R2, X1, and X2 taken together form a 1,2-ethanediyl-bisoxy as set forth in column 12, lines 23-25 (101752-47-0). Claim(s) 1, 2 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ottow et al., U.S. Patent No. 4,829,060. Ottow teaches the process of preparing the compounds of Formula (II) where R1, R2, X1, and X2 taken together form a 2,2-dimethyl-1,3-propanediyl-bisoxy and R3 is CH2CH2OH as set forth in example 5 (a) with starting material (105071-66-7) and the product (93748-54-0). Claim(s) 1, 2 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Torelli et al., GB 2160873. Torelli teaches the process of preparing the compounds of Formula (II) where R1, R2, X1, and X2 taken together form a 3,3-(1,2-ethanediyl-bisoxy) and R3 is CH3 as set forth in Stage C on page 23 with starting material (84371-64-2) and the product (91934-77-9). Claim(s) 76 and 77 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nioue et al., U.S. Patent No. 4,900,725. Nioue teaches the compound and process of preparing the compounds of Formula (VI) where R1, R2, X1, and X2 taken together form a 1,2-ethanediyl-bisoxy as set forth in Example 1, Step B (116680-14-9). Claim(s) 1, 2 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nedelec et al., U.S. Patent No. 4,921,846. Nedelec teaches the process of preparing the compounds of Formula (II) (9194-77-9) from a compound of Formula (I) (122850-45-7) where R1, R2, X1, and X2 taken together form a 1,2-ethanediyl-bisoxy and R3 is CH2CH2OH as set forth in Example 3, Step B. Claim(s) 16, 17 and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al., Journal of China Pharmaceutical University. Chen teaches the process of preparing the compounds of Formula (III) (147385-05-5) from a compound of Formula (II) (91934-77-9) with a UV light flow where R1, R2, X1, and X2 taken together form a 1,2-ethanediyl-bisoxy as set forth in examples 4 to 5. Claim(s) 1, 2, 5, 62 and 63 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gao et al., CN 1053450. Gao teaches the process of preparing the compounds of Formula (II) from a compound of Formula (I) where R1, R2, X1, and X2 taken together form a 1,2-ethanediyl-bisoxy and R3 is H as set forth in Example 11, the reaction of XII’ (91934-77-9) to XIII (91934-95-1) where A is CH2-CH2; R is dimethylaminophenyl; and R1 is ethynyl. Claim(s) 1, 2, 5, 62 and 63 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fiordeliso et al., U.S. Patent No. 7,678,781. Fiordeliso teaches the process of preparing the compounds of Formula (II) (91934-77-9) from Formula (I) (9194-95-1) where R1, R2, X1, and X2 taken together form a 1,2-ethanediyl-bisoxy and R3 is H as set forth in Example 73. Claim(s) 24, 25, 32, 47, 48, 57, 62 and 63 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DeBono et al., Scientific Reports. DeBono teaches the compounds of Formula (X) (2689006-75-3 Ex. 32, 2689006-74-2 Ex. 31, 91935-15-8 Ex. 30) and (XI) (91934-95-1 Ex. 22) and process of preparing the compounds of Formula (X) and (XI) where R1, R2, X1, and X2 taken together form a 1,2-ethanediyl-bisoxy and R5 in Formula (X) is Si(CH3)3, Si(CH2CH3)3, or Si(CH(CH3)2)3 as set forth in example (91934-95-1 Ex. 22, 91934-77-9 Ex. 4, 84371-64-2 Ex. 5, 2689006-75-3 Ex. 32, 2689006-74-2 Ex. 31, 91935-15-8 Ex. 30). Claim(s) 16, 17 and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tilstam et al., U.S. Patent No. 10,308,676. Tilstam teaches the process of preparing the compounds of Formula (III) from a compound of Formula (II) where R1, R2, X1, and X2 taken together form a 1,2-ethanediyl-bisoxy as set forth in claim 5. Additionally, the generic structure of Tilstam teaches the process of preparing the compounds of Formula (III) from the compounds of Formula (II) where R1 is methyl, ethyl or propyl; R2 is methyl, ethyl or propyl; X1 is O; and X2 is O or R1, R2, X1, and X2 taken together form a 1,2-ethanediyl-bisoxy or 2,2-dimethyl-1,3-propanediyl-bisoxy as set for in column 5, lines 16-18. 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 16, 17 and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 10,308,676. Although the claims at issue are not identical, they are not patentably distinct from each other because the process of preparing the compounds of Formula (III) from the compounds of Formula (II) where R1 is methyl, ethyl or propyl; R2 is methyl, ethyl or propyl; X1 is O; and X2 is O or R1, R2, X1, and X2 taken together form a 1,2-ethanediyl-bisoxy or 2,2-dimethyl-1,3-propanediyl-bisoxy is embraced by the process as claimed herein. Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDA L COLEMAN whose telephone number is (571)272-0665. The examiner can normally be reached Mon-Fri 10-6 (flex). 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, Jeffrey H. Murray can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /BRENDA L COLEMAN/Primary Examiner, Art Unit 1624
Read full office action

Prosecution Timeline

Jan 19, 2024
Application Filed
Mar 13, 2026
Non-Final Rejection mailed — §102, §112, §DOUBLEPATENT (current)

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4y 5m to grant Granted May 19, 2026
Patent 12629359
STRUCTURAL ANALOGUES OF METHYLPHENIDATE AS PARKINSON'S DISEASE-MODIFYING AGENTS
3y 3m to grant Granted May 19, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
75%
Grant Probability
90%
With Interview (+15.7%)
2y 4m (~0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 1617 resolved cases by this examiner. Grant probability derived from career allowance rate.

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