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 .
Status of the Claims
Claims 1-5 and 7-12 are pending and examined.
Response to Amendments
Applicant’s amendments to the claims of June 5, 2026, in response to the Office Action of February 2, 2026 are acknowledged.
Response to Arguments
Applicant indicated that a Terminal Disclaimer was filed concurrently with their response for each of Applications ‘814, ‘815, and ‘818.
The examiner notes that a Terminal Disclaimer has not been received by the Office. As such, the Double Patenting Rejections are maintained.
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 1-5, 8-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the following claims of U.S. Patent Application No. 18/789,814 (referred to as co-pending ‘814): 1,2,9, and 10-13 (for present claims 1-5, 8-12).
Although the claims are not identical, they are not patentably distinct from one another because the claims of the copending application are also drawn to the same structures of the instant application, with comparable limitations such as formulation modifications using the claimed compound. The copending claims 1,2,9, and 10-13 are all drawn to the same compounds and formulations thereof as taught in Applicant’s claims 1-5, and 8-14. Applicant’s claim 7 shows a structure with the nitrogen in an alternative position, which is not taught by the copending 18/789,814. It would have been prima facie obvious to one skilled in the art to arrive at the Applicant’s instant claims, in view of the claims of copending application 18/789,814. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5, 8-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the following claims of U.S. Patent Application No. 18/789,815 (referred to as co-pending ‘815): 1-14 (for present claims 1-5, 8-12).
Although the claims are not identical, they are not patentably distinct from one another because the claims of the copending application are also drawn to the same structures of the instant application, with comparable limitations such as formulation modifications using the claimed compound. The copending claims 1-14 are all drawn to the same compounds and formulations thereof as taught in Applicant’s claims 1-5, and 8-14. Applicant’s claim 7 shows a structure with the nitrogen in an alternative position, which is not taught by the copending 18/789,815. It would have been prima facie obvious to one skilled in the art to arrive at the Applicant’s instant claims, in view of the claims of copending application 18/789,815. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5, 8-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the following claims of U.S. Patent Application No. 18/789,818 (referred to as co-pending ‘818): 1, 6, and 9-13 (for present claims 1-5, 8-12).
Although the claims are not identical, they are not patentably distinct from one another because the claims of the copending application are also drawn to the same structures of the instant application, with comparable limitations such as formulation modifications using the claimed compound. The copending claims 1, 6, and 9-13 are all drawn to the same compounds and formulations thereof as taught in Applicant’s claims 1-5, and 8-14, differing by only minor halogen or methyl side groups that are not patentably distinct, as seen in Applicant’s claim 8, and copending claim 6. Applicant’s claim 7 shows a structure with the nitrogen in an alternative position, which is not taught by the copending 18/789,818. It would have been prima facie obvious to one skilled in the art to arrive at the Applicant’s instant claims, in view of the claims of copending application 18/789,818. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 extension fee 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 JARED D. BARSKY whose telephone number is (571)-272-2795. The examiner can normally be reached on Monday through Friday from 8:30 to 5:30. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Amy L. Clark can be reached on 571-272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JARED BARSKY/Primary Examiner, Art Unit 1628
