DETAILED REISSUE ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Reissue Application
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. § 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
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 instant reissue application seeks to reissue United States Patent No. 8,685,986 to Hagihara et al. which issued on 1 April 2014.
Priority
United States Patent No. 8,685,986 was filed on 30 March 2010 and claims foreign priority to 30 March 2009.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 14 February 2024 has been considered by the Examiner.
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.
Reissue Declaration and Claim Rejection 35 U.S.C. § 251
The reissue oath/declaration filed with this application is defective (see 37 CFR 1.175 and MPEP §1414) because of the following reasons:
The reissue oath/declaration states that claim 18 contains compound names that the patentee wishes to correct. However, the reissue oath/declaration does not specifically identify a single word, phrase, or expression in claim 18 which renders the original patent wholly or partly inoperative. See MPEP 1414 II(B).
Additionally, reissue declaration states that new claims 19 and 20 correct the error of the patentee claiming less than the patentee had the claim right to claim in U.S. Patent No. 8,685,986. However, the error statement does not indicate a particular error that the introduction of claims 19 and 20 corrects. See MPEP 1414 II(A).
It is suggested that the patentee amend the reissue declaration so as to indicate that the instant reissue application seeks to correct the names of the last two compounds of claim 18, and to correct the error of failing to present claims 19 and 20 that are narrowing in scope than the existing patent claims, without narrowing any of the existing patent claims. See MPEP 1414 II (A) and In re Tanaka, 640 F.3d 1246, 1251, 98, USPQ2d 1331, 134 (Fed. Cir. 2011).
Claims 1-20 are rejected under 35 U.S.C. § 251 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 defects in the reissue declaration is set forth in the discussion above in this Office action.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 251 set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter. The closest identified prior art reference is WO 2008/015517 to Prasanna et al. and US 2007/0049625 to Woodward et al.
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Prasanna et al. disclose a series of compounds including the following:
Prasanna et al. do not teach or suggest a secondary amine bonded to a pyridine ring which is a part of the compound recited in instant claim 1.
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Woodward et al. disclose the following compound:
wherein R may be an aliphatic straight chain or branched radical comprising of from 1 to 20 carbon atoms [abstract]. Woodward et al. do not teach or suggest a compound comprising the Y group recited in instant claim 1 or a secondary amine bonded to a pyridine ring.
As such, the closest identified prior art does not reasonably teach or suggest a compound which meets the limitations of instant claim 1.
Duty to Disclose
Applicant is reminded of the continuing obligation under 35 U.S.C. 1.178(b), to timely apprise the Office of any prior or concurrent proceedings in which U.S. Patent No. 8,685,986 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 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, 1422.01, and 1442.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEE E SANDERSON whose telephone number is (571) 270-1079. The examiner can normally be reached M-F: 9:30AM to 7:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at 571-272-6600. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEE E SANDERSON/Reexamination Specialist, Art Unit 3991
Conferees:
/JOSEPH R KOSACK/Reexamination Specialist, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991