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 .
This is a Final Office Action.
Election/Restrictions
Applicant's election without traverse of Group (I) in the reply filed on March 6, 2025 is acknowledged. Group (I), drawn to compounds of formula (I), pyrrolo[3,2-d]pyrimidines, and compositions thereof, embraced by claims 1-13 and 16-18 was elected by Applicant. Applicant has not pointed to any errors in the Examiner’s analysis of the classification of the different inventions. The requirement is still deemed proper and is therefore made FINAL.
Applicant elected the following species:
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and water as an additional species for the composition. Based on the search, the species election is withdrawn.
Claims 7-9, 13, 17 and 21-25 are pending and under examination. Claims 21-25 are new claims.
Claim Objections
The objection to claim 1 because of the “S(O0-2)” is withdrawn based on the amendments.
The objection to claim 7 because the term “or” is required between the last two groups in the definition of R28, is withdrawn based on the amendments.
The objection to claim 8 because the term “wherein” is not required in the penultimate line of said claim, is withdrawn based on the amendments.
The objection to claim 16 because the term “pyrollidine” should be replaced with “pyrrolidine” is withdrawn based on the amendments.
The objection to claims 17 and 18 because the term “said” is withdrawn based on the amendments.
Claims 9 and 21-24 are objected to because of the following informalities: the phrase “substituents selected from” should be removed from the definition of R20. Appropriate correction is required.
Claims 23 and 24 are objected to because of the following informalities: the phrase “substituents selected from” should be removed from the definition of R21. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: the “formula I” should be replaced with “formula I*” in line 2. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The rejection of claims 1-8, 13, 16 and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the “COOC1-C3” group in the definition of R10 is withdrawn based on the amendments.
The rejection of claims 1-11, 13 and 16-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the term “comprises” is withdrawn based on the amendments.
Double Patenting
The rejection of claims 1-13 and 16-18 under 35 U.S.C. 101 as claiming the same invention as that of claims 1-13 and 16-18 of prior U.S. Patent No. 11155558, is withdrawn based on the amendments.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 7-9, 13, 17 and 21-25 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-13 and 16-18 of U.S. Patent No. 11155558. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims in both applications cover the same subject matter. The claims in the present application are drawn to compounds of formula (I), see bottom right-side, which is a subset of the claims in the ‘558 patent, see bottom left-side, which is a broader set of claims.
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Claims 7-9, 13, 17 and 21-25 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11905283. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims in the present application are drawn to compounds of formula (I), see bottom right-side. The claims in the ‘283 patent are drawn to compounds of formula (I), see bottom left-side, which is subset of the present claims.
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Applicant traverses by stating, “Amended claim 7 encompasses a compound of Formula I* in which X is CR21. Nothing in the claims of the ‘558 patent or the ‘293 patent would lead a person of ordinary skill in the art to specifically single out X as CR21 and thereby arrive at the limitations of the pending claims. Accordingly, nothing in
the claims of the ‘558 patent or the ‘293 patent teaches or suggests the instantly claimed compounds, and the present claims would not have been obvious over the claims of the ‘558 patent or the ‘293 patent.”
This is unpersuasive. The claims in the ‘558 and ‘293 both teach X as CR21 or N, which are alternatively useable. MPEP 2131.02 states “When a claimed compound is not specifically named in a reference, but instead it is necessary to select portions of teachings within the reference and combine them, e.g., select various substituents from a list of alternatives given for placement at specific sites on a generic chemical formula to arrive at a specific composition, anticipation can only be found if the classes of substituents are sufficiently limited or well delineated. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990).”
Thus, the rejections are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SUSANNA MOORE whose telephone number is (571)272-9046. The examiner can normally be reached Monday - Friday, 10:00 am to 7:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUSANNA MOORE/Primary Examiner, Art Unit 1624
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