DETAILED ACTION
This action is in response to Applicant’s submission dated May 18, 2026, in which Applicant amended claims 1 and 26, elected the species of Example 1, Compound 1 without traverse as well as the invention of Group II with traverse, and argued that Group II should also include claims 6-7 and 34.
Information Disclosure Statement
The references contained in the IDS dated February 26, 2026; December 13, 2023; and December 18, 2023 are made of record.
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 .
Election/Restriction
Claims 128-129 and 145 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups VI to X, there being no allowable generic or linking claim. Election was made with traverse in the reply filed on May 18, 2026. Examiner agrees with Applicant’s new Groups I to X and the claims contained therein.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-2, 6-7, 14, 23, 26, 34, 37-38, 53, 62, 87-88, 98, 107, 109, and 111 are examined. A complete reply to the final rejection must include cancellation of non-elected claims or other appropriate action (37 CFR 1.144) See MPEP § 821.01.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 1-2, 6-7, 14, 23, 26, 34, 37-38, 53, 62, 87-88, 98, 107, 109, and 111 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 99, 116-117, 121, and 123 of United States Patent Application No. 19/032,989, which published as US 2025/0243187. Although the conflicting claims are not identical, they are not patentably distinct from each other because in each case the claims are directed to compounds of Formula (I), or a pharmaceutically acceptable salt thereof. Every variable group overlaps with one another significantly and the eight moieties of Ring A1 of the reference overlaps with the elected invention when instant A2 is an unsubstituted or substituted 5- to 7-membered ring system that optionally includes 1 heteroatom selected from O.
As such, the rejected claims are rendered obvious by the reference.
This obviousness-type double patenting rejection is provisional because the conflicting claims have not in fact been patented.
Claims 1-2, 6-7, 14, 23, 26, 34, 37-38, 53, 62, 87-88, 98, 107, 109, and 111 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 99, 116-117, 121, and 123 of United States Patent Application No. 18/347,099, which published as US 2024/0018126. Although the conflicting claims are not identical, they are not patentably distinct from each other because in each case the claims are directed to compounds of Formula (I), or a pharmaceutically acceptable salt thereof. Every variable group overlaps with one another significantly and the eight moieties of Ring A1 of the reference overlaps with the elected invention when instant A2 is an unsubstituted or substituted 5- to 7-membered ring system that optionally includes 1 heteroatom selected from O.
As such, the rejected claims are rendered obvious by the reference.
This obviousness-type double patenting rejection is provisional because the conflicting claims have not in fact been patented.
Claims 1-2, 6-7, 14, 23, 26, 34, 37-38, 53, 62, 87-88, 98, 107, 109, and 111 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 99, 116-117, 121, and 123 of United States Patent Application No. 19/120,644, which has yet to publish. Although the conflicting claims are not identical, they are not patentably distinct from each other because in each case the claims are directed to compounds of Formula (I), or a pharmaceutically acceptable salt thereof. Every variable group overlaps with one another significantly and the one moiety of Ring A1 of the reference overlaps with the elected invention when instant A2 is an unsubstituted or substituted 6-membered ring system that optionally includes 1 heteroatom selected from O.
As such, the rejected claims are rendered obvious by the reference.
This obviousness-type double patenting rejection is provisional because the conflicting claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to ERICH A LEESER whose telephone number is (571) 272-9932. The Examiner can normally be reached Monday through Friday from 10-6 PST, M-F. PST.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Mr. James Alstrum-Acevedo can be reached at (571) 272-5548. The fax number for the organization where this application is assigned is 571-273-8300.
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/ERICH A LEESER/Primary Examiner, Art Unit 1622
United States Patent and Trademark Office
Tel. No.: (571) 272-9932
Prosecution Insights