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 .
DETAILED ACTION
An action on the merits of claims 31-50 is contained herein.
Priority
This application is a continuation of U.S. Patent Application No. 16/599,392, filed
October 11, 2019, which is a continuation of U.S. Patent Application No. 16/135,171, filed September 19, 2018, and issued as U.S. Patent No. 10,487,061 on November 26, 2019, which is a continuation of U.S. Patent Application No. 15/828,935, filed December 1, 2017, and issued as U.S. Patent No. 10,112,909 on October 30, 2018, which is a continuation of U.S. Patent Application No. 15/160,885, filed May 20, 2016, and issued as U.S. Patent No. 9,862,687 on January 9, 2018, which is a divisional application of U.S. Patent Application No. 14/604,334, filed January 23, 2015, and issued as U.S. Patent No. 9,371,344, on June 21, 2016, which is a continuation of U.S. Patent Application No. 14/512,335, filed October 10, 2014 and issued as US
8,962,829 on February 24, 2015, which claims priority to U.S. Provisional Application No. 61/904,857, filed November 15, 2013,
Information Disclosure Statement
The examiner has considered the references cited in the information disclosure statement filed of record.
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 obviousness-type 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); 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 conflicting 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.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
U.S. Patent No. 8,962,829
Claims 31-50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 and 16-22 of U.S. Patent No. 8,962,829. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are directed to same Morphic form II and compositions thereof disclosed in the conflicting claims of US 8,962,829.
U.S. Patent No. 9,371,344
Claims 31-50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-13 of U.S. Patent No. 9,371,344.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are directed to same Morphic form II and more specifically compositions thereof disclosed in the conflicting claims of US 9,371,344.
U.S. Patent No. 10,112,909
Claims 31-50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 10,112,909.
Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims are directed to methods of using the same Morphic form II disclosed in the instant claims. The disclosure discloses that the compounds can be used in the manner disclosed in the patented claimed methods (see [00222]) . A claim to the use of a compound is not patentably distinct from a conflicting claim disclosing the same compound, wherein the conflicting specification discloses the instantly claimed uses of that compound. Sun Pharm. Indus. v. Eli Lilly & Co., 611 F.3d 1381, 95 U.S.P.Q.2D 1797 (Fed. Cir. 2010).
U.S. Patent No. 10,487,061
Claims 31-50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-31 of U.S. Patent No. 10,487,061.
Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims are directed to methods of using the same Morphic form II disclosed in the instant claims. The disclosure discloses that the compounds can be used in the manner disclosed in the patented claimed methods (see [00222]) . A claim to the use of a compound is not patentably distinct from a conflicting claim disclosing the same compound, wherein the conflicting specification discloses the instantly claimed uses of that compound. Sun Pharm. Indus. v. Eli Lilly & Co., 611 F.3d 1381, 95 U.S.P.Q.2D 1797 (Fed. Cir. 2010). Additionally the instant claims are directed to same Morphic form II and more specifically compositions thereof disclosed in the conflicting claim 31 of 10,487,061.
U.S. Patent No. 11,912,667
Claims 31-50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,912,667.
Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims are directed to methods of using the same Morphic form II disclosed in the instant claims. The disclosure discloses that the compounds can be used in the manner disclosed in the patented claimed methods (see [00222]) . A claim to the use of a compound is not patentably distinct from a conflicting claim disclosing the same compound, wherein the conflicting specification discloses the instantly claimed uses of that compound. Sun Pharm. Indus. v. Eli Lilly & Co., 611 F.3d 1381, 95 U.S.P.Q.2D 1797 (Fed. Cir. 2010).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-9023. 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.
/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624
Prosecution Insights