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
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. This application, filed November 1, 2023, is a reissue continuation of 17/526,799, now RE49,834, which is a reissue of U.S. Patent 10,738,060 (hereafter the '060 patent), which issued from U.S. application Serial No. 16/333,994 (the ‘994 application) with claims 1-12 on August 11, 2020.
Reissue Declaration
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP § 1414) because of the following:
The error statement in the reissue declaration, i.e., claim 6 is to be broadened since it fails to recite pharmaceutically acceptable salts of the compound of formula A1-14, is not an error being corrected in the instant reissue application. Rather, the instant reissue application narrows the scope of the issued claims of the ‘060 patent, e.g., claim 1, by presenting claims limited to a compound of formula (9) or a pharmaceutically acceptable salt thereof. Accordingly, the declaration is defective because the cited error is not an error being relied upon as the basis for filing the present reissue application.
A new reissue declaration with a proper error statement is required.
Claims 13-18 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
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.
The consent of assignee filed with this application is a copy of the consent of assignee from the parent reissue application 17/526,799. Since parent reissue application 17/526,799 was not abandoned, and the instant reissue application does not correct an error for which consent was made, the copy of the consent of assignee filed in the current application is inadequate. See MPEP §§ 1410.02.I and 1451.II.A. A new consent of assignee is required.
Specification
The disclosure is objected to because of the following informalities:
37 CFR 1.177(a) requires that all multiple reissue applications resulting from a single patent must include as the first sentence of their respective specifications a cross reference to the other reissue application(s). See also MPEP 1451.I. The instant specification is objected to because, while the specification includes a cross-reference to reissue applications 18/122,295 and 17/526,799, it fails to provide a cross-reference to 19/430,658.
Also, the “xx/xxx,xxx” recited in the newly added paragraph before the Cross Reference To Related Applications section needs to be replaced with the instant application serial number.
Additionally, 18/122,295 and 17/526,799 have issued as U.S. Patent RE50,799 and RE49,834. It is requested that Applicant file a Certificate of Correction in these two reissue patents so that all reissue applications of the ‘060 patent, i.e., 17/526,799, 18/122,295, 18/386,142 and 19/430,658, are identified in the first sentence of the reissue patents.
Appropriate correction is required.
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 13-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 and 15 of U.S. Patent No. RE49,834 (the ‘834 patent).
Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons.
Claim 1, 4 and 15 of the ‘834 patent teach the compound “2-[(2R,5S)-5-[2-ethylfuro[3,2-b]imidazo[4,5-d]pyridin-1-yl]tetrahydropyran-2-yl]acetonitrile (9)” or a pharmaceutically acceptable salt thereof, and thus, anticipate instant claims 13-18.
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 proceed-ing in which Patent No. 10,738,060 is or was involved. These proceedings would include interferences, reissues, reexaminations, 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 mate-rial to patentability of the claims under consideration in this reissue appli-cation. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN D DIAMOND whose telephone number is (571)272-1338. The examiner can normally be reached Monday through Thursday 5:30 am to 3:00 pm, and Fridays from 5:30 am to 9:30 am.
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 on 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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Signed:
/ALAN D DIAMOND/Patent Reexamination Specialist
Central Reexamination Unit 3991
Conferees:
/JOSEPH R KOSACK/ /Patricia L Engle/Patent Reexamination Specialist SPRS, Art Unit 3991
Central Reexamination Unit 3991
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