DETAILED ACTION
Claims 1-108 are pending in the present reissue application.
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 .
Reissue Applications
The present application is a reissue application of USPN 9,834,539, issued from U.S. Application No. 14/858,167, which was filed on September 18, 2015.
Consent of Assignee
This application is objected to under 37 CFR 1.172(a) as lacking the written consent of all assignees owning an undivided interest in the patent. The consent of the assignee must be in compliance with 37 CFR 1.172. See MPEP § 1410.01.
A proper assent of the assignee in compliance with 37 CFR 1.172 and 3.73 is required in reply to this Office action.
The consent documents filed on October 25, 2023 does not identify the assignee(s) owning an undivided interest in the original patent:
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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, 2, 4, 5, 7, 9, 10, 14, 16-18, 20, 22, 25-43, 46, 54, 57, 65, 68, 76, 79, 87, 90, 98, and 101 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,414,752. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The ‘752 patent claims a composition comprising the compound
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, which reads on the claims where A is CN, R5 and R9 are C1 alkyl, U and W1-W3 are CH, R1 is Cl, and all other R groups are hydrogen. Additionally, the compound is the 13th compound of claim 20, the 3rd compound of claim 43. While not specifically claimed, the description teaches the same methods of use of the compound. See column 12, lines 12-55. As the utility is inseparable from the compound, the claims are obvious over each other. See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co., 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010).
Claims 1, 2, 4, 5, 7, 9, 10, 14, 16-18, 20, 22, 25-43, 46, 54, 57, 65, 68, 76, 79, 87, 90, 98, and 101 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,550,098. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The ‘098 patent claims a composition comprising the compound
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, which reads on the claims where A is CN, R5 and R9 are C1 alkyl, U and W1-W3 are CH, R1 is Cl, and all other R groups are hydrogen. Additionally, the compound is the 13th compound of claim 20, the 3rd compound of claim 43. While not specifically claimed, the description teaches the same methods of use of the compound. See column 12, line 34 through column 13, line 9. As the utility is inseparable from the compound, the claims are obvious over each other. See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co., 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010).
Claims 1, 2, 4, 5, 7, 9, 10, 14, 16-18, 20, 22, 25-43, 46, 54, 57, 65, 68, 76, 79, 87, 90, 98, and 101 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,889,567. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The ‘567 patent claims a method of preparing the compound
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, which reads on the claims where A is CN, R5 and R9 are C1 alkyl, U and W1-W3 are CH, R1 is Cl, and all other R groups are hydrogen. Additionally, the compound is the 13th compound of claim 20 and the 3rd compound of claim 43. As the compound is produced by the claim of the ‘567 patent, the compound is anticipated. While not specifically claimed, the description teaches the same methods of use of the compound. See column 12, line 36 through column 13, line 12. As the utility is inseparable from the compound, the claims are obvious over each other. See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co., 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010).
Claims 1, 2, 4, 7, 9, 10, 14, 16-18, 20, 22, 25-43, 46, 54, 57, 65, 68, 76, 79, 87, 90, 98, and 101 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,498,913. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The ‘913 patent claims a composition comprising the compound
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, which reads on the claims where A is CN, R5 is C1 alkyl, U and W1-W3 are CH, R1 is Cl, and all other R groups are hydrogen. Additionally, the compound is the 14th compound of claim 20 and the 4th compound of claim 43. While not specifically claimed, the description teaches the same methods of use of the compound. See column 12, line 33 through column 13, line 10. As the utility is inseparable from the compound, the claims are obvious over each other. See Sun Pharm. Indus., Ltd. v. Eli Lilly & Co., 611 F.3d 1381, 95 USPQ2d 1797 (Fed. Cir. 2010).
Claims 1-108 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,275,715. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims overlap in the entire scope of the genus of Formula 1 and the methods of use cover the same conditions. Therefore, the claims are anticipated.
Claims 1-108 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 19/362,263 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims overlap in the entire scope of the genus of Formula 1 and the methods of use cover the same conditions. Therefore, the claims are anticipated.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Duty to Disclose
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 9,834,539 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
Claims 1-108 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joseph Kosack whose telephone number is (571)272-5575. The examiner can normally be reached M-F 8:00-4:30.
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, Patricia Engle can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH R KOSACK/Patent Reexamination Specialist
Central Reexamination Unit 3991
/Alan Diamond/
Patent Reexamination Specialist
Central Reexamination Unit 3991
Prosecution Insights