DETAILED ACTION
A final Office action was mailed 30 October 2025 (“Office Action”).
Applicant’s reply was received 30 April 2026 (“Reply”).
A request for continued examination under 37 CFR § 1.114, including the fee set forth in 37 CFR § 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR § 1.114, and the fee set forth in 37 CFR § 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR § 1.114. Applicant’s submission filed with the Reply has been entered.
Status of the Claims
The listing of claims filed with the Reply has been considered.
Claims 1, 7, 13, 17, 18, 20–22, 25, 45, 48, 50, 62, and 64–67 are pending. Claims 21, 62, and 64–66 are amended. Claims 2–6, 8–12, 14–16, 19, 23, 24, 26–44, 46, 47, 49, 51–61, 63, and 68–91 are canceled.
Information Disclosure Statement
The IDS submitted with the Reply is acknowledged and has been considered.
Double Patenting
Claim 66 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 59 of copending Application No. 18/463,183 (“the ’183 application” or “reference claim”).
Certain compounds at issue are shown in the table below.
18/462,918
18/463,183
PNG
media_image1.png
100
237
media_image1.png
Greyscale
PNG
media_image2.png
575
287
media_image2.png
Greyscale
PNG
media_image3.png
223
238
media_image3.png
Greyscale
PNG
media_image4.png
146
238
media_image4.png
Greyscale
Although the conflicting claims are not identical, they are not patentably distinct from each other because at least one compound in instant claim 66 is obvious in view of at least one compound from the reference claim, or vice versa.
The instant claim is rejected for containing one or more compounds that are prima facie obvious over one or more compounds in the reference claim. The compound shown above from the instant claim is not limited by stereochemistry and therefore encompasses all stereoisomers. The instant compound and the compounds from the reference claim are positional isomers: they are structurally identical but for the position of the chlorine on the bicyclic ring. Absent evidence of non-obviousness, positional isomers are obvious over one another. See, e.g., In re Jones, 162 F.2d 638 (CCPA 1947) (Absent unexpected results, one of skill in the art would expect compounds that differ in only the position of a substituent to possess similar chemical and physical properties.); In re Norris, 179 F.2d 970 (CCPA 1950) (A novel chemical compound that is isomeric with a compound in the prior art is not patentable unless the new compound possesses an unexpected property.).
The conflicting claims have not been unnecessarily reviewed and may share compounds that are obvious over one another based on structural similarity. Applicant is encouraged to review conflicting claims for additional overlap.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented.
Reply to Arguments
Applicant states amended claim 66 is patentably distinct from reference claim 59. (Remarks, p.44). Applicant’s remarks have been considered but are not relevant to the rejection.
Allowable Subject Matter
Claims 1, 7, 13, 17, 18, 20–22, 25, 45, 48, 50, 62, 64, 65, and 67 are allowed.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 C.F.R. § 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 C.F.R. § 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 C.F.R. § 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 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 C.F.R. § 1.17(a)) pursuant to 37 C.F.R. § 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.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jason Nolan at (571) 272-2480. The examiner can normally be reached Monday through Friday between 9:00–5:00.
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 submit an Automated Interview Request: http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Milligan, can be reached on 571-270-7674.
The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON M. NOLAN/Patent Examiner, Art Unit 1623
/GEORGE W KOSTURKO/Primary Examiner, Art Unit 1621
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