DETAILED ACTION
Notice of 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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 6/04/2025 is acknowledged. The requirement is still deemed proper and is therefore made FINAL.
Claim 53 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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’s election without further specifying traverse of a single species in the reply filed on 6/04/2025 is also acknowledged.
The elected species read upon claims 40-44, 49, 51-52 and 77. Claims 45 and 50 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Expansion of Election of Species Requirement
Applicant’s elected species elected species – a compound of Formula (II) having the following structure:
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– reads upon claims 40-44, 49, 51-52 and 77.
The elected species has been searched and is deemed to be free of the prior art and non-obvious. Accordingly, the search has been expanded as called for under current Office Markush practice – a compound-by-compound search – to include a single additional species (M.P.E.P. § 803.02). That species is:
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wherein, in Formula (II), D is a bridged bicyclic cycloalkyl; R1 and R2 are each hydrogen; A and W are each phenyl; and t is 0 – which reads on claims 40 and 43-44. A rejection to those claims follows.
Since the search has not been expanded beyond the single additional species identified above, claims 41-42, 49, 51-52 and 77, which are directed to the elected species but which do not include the single additional species, are objected to as indicated below, and have not been further examined.
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.
Claims 40 and 43-44 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS RN 6551-04-8 (entered into STN on 11/16/1984).
Claim 40 is drawn to a compound of Formula (II) which embraces the following compound species
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wherein D is a bridged bicyclic cycloalkyl; R1 and R2 are each hydrogen; A and W are each phenyl; and t is 0 –which reads on claims 40 and 43-44.
The compound is taught by CAS RN 6551-04-8.
Accordingly, claims 40 and 43-44 are anticipated.
Claim Objections
Claims 41-42, 49, 51-52 and 77, which are directed to the elected species but which do not include the single additional species, are objected to, and have not been further examined.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 40-44, 49, 51-52 and 77 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,913,727.
Although the claims at issue are not identical, they are not patentably distinct from each other. The ‘727 claims are drawn to compounds including, for example, the following compound species:
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(Claim 18, Column 973, Lines 15-25) as recited by instant claims 40-44, 49 and 51-52, wherein it would have been obvious to formulate said compounds as a composition further comprising a pharmaceutically acceptable carrier, as recited by instant claim 77.
Claims 40-44, 49, 51-52 and 77 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12, 15-17, 20, 22 and 30-40 of copending Application No. 18/330,171.
Although the claims at issue are not identical, they are not patentably distinct from each other. The ‘171 claims are drawn to compounds and compositions including, for example, the following compound species:
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(Claim 18) as recited by instant claims 40-44, 49 and 77 and which differs from the instantly claimed compound
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of claims 51-52 by a single halogen atom, which would have been obvious to substitute.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CRAIG D RICCI whose telephone number is (571) 270-5864. The examiner can normally be reached on Monday through Thursday, and every other Friday, 7:30 am - 5:00 pm . 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, Bethany Barham can be reached on (571) 272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CRAIG D RICCI/Primary Examiner, Art Unit 1611