DETAILED ACTION
Claims 33-54 are currently pending in the instant application.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Arguments
Applicant’s arguments, see p. 11, filed 03/10/2026, with respect to claims 33-54 have been fully considered and are persuasive. The 35 U.S.C. 103(a) rejection of claims 33-54 has been withdrawn.
Maintained 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.
Rejection I
Claims 33-54 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,666,557 (hereafter referred to as ‘557). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘557 is drawn to methods of using compounds of formula
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(see claim 1) with more specific compounds taught such as
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(see claim 14) and species exemplified including
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(see claim 15 of ‘557). This compound corresponds to the first compound of instant claim 33. Further compounds disclosed in claim 15 of ‘557 corresponds to the compounds disclosed in the instant claims – see for example the last compound of instant claim 33 and instant claim 53
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is the 1st compound in col. 93 of ‘557. Regarding claim 54, it would be obvious to add a carrier to an obvious compound – see Ex parte Douros, 163 USPQ 667 (P.T.O. Bd. App. 1968) in order to allow for administration of the compound in the treatment of disease (i.e. cancer) which ‘557 teaches the compounds are used in methods of treating.
Rejection II
Claims 33-54 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,568,871 (hereafter referred to as ‘871). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘871 is drawn to methods of using compounds of formula
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(see claim 7) with compounds such as
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(see claim 17 of ‘871) exemplified. This compound corresponds to the first compound of instant claim 33. Further compounds disclosed in claim 17 of ‘871 corresponds to the compounds disclosed in the instant claims – see for example the last compound of instant claim 33 and instant claim 53
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is the 4th to last compound of claim 17 of ‘871. Regarding instant claim 54, it would be obvious to add a carrier to an obvious compound – see Ex parte Douros, 163 USPQ 667 (P.T.O. Bd. App. 1968) in order to allow for administration of the compound in the treatment of disease (i.e. cancer) which ‘871 teaches the compounds are used in methods of treating.
Rejection III
Claims 33-54 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 9,676,754 (hereafter referred to as ‘754). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘754 is drawn to a different scope of compounds that still encompass the compounds of the instant application. US Pat. No. ‘754 teaches compounds of formula
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(see claim 14) and specific compounds in claim 15 along with pharmaceutical compositions of said compounds (see claim 16). drawn methods of using compounds of formula
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(see claim 7) with compounds such as 2-(3′-(3-(1-(4-(tert-Butyl)benzyl)-4-ethyl-5-oxo-4,5-dihydro-1H-1,2,4-triazol-3-yl)propyl)-[1,1′-biphenyl]-3-yl)acetic acid which corresponds to
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(see 1st compound of claim 15 of ‘754) exemplified. This compound corresponds to the first compound of instant claim 33. Further compounds disclosed in claim 15 of ‘754 corresponds to the compounds disclosed in the instant claims – see for example the last compound of instant claim 33 and instant claim 53
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is 3′-(3-(1-(4-(tert-Butyl)benzyl)-4-ethyl-5-oxo-4,5-dihydro-1H-1,2,4-triazol-3-yl)propyl)-3-propoxy-[1,1′-biphenyl]-4-yl)acetic acid, which is the 4th to last compound of claim 15 of ‘754. Thus the compounds of the instant claims are taught by ‘754.
Conclusion
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 KAREN CHENG whose telephone number is (703)756-4699. The examiner can normally be reached M-F, 9AM-6PM PST.
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 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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/KAREN CHENG/Primary Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623