DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This is the first action on the merits.
Election/Restrictions
Applicant's election without traverse of Group III in the reply filed on September 3, 2025 is acknowledged. Group III, drawn to a process of making the compounds of formula (I), pyrido[4,3-d]pyrimidines, embraced by claim 20 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.
The species election is withdrawn.
In summary claims 1-20 are pending and claim 20 is under examination. Claims 1-19 are currently withdrawn.
Note: All the limitations of claim should be inserted into claim 20 since claim 20 incorporates by reference claim 1.
Specification
The substitute specification filed July 3, 2025 has been entered because it does conform to 37 CFR 1.125(b) and (c).
Claim Objections
Claim 20 is objected to because of the following informalities: the term “acetitinyl” is misspelled in the definition of “heterocyclyl” on page 1, with the incorporation by reference of claim 1. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: the term “the” should be inserted between “wherein” and “compound” on page 199, penultimate line, above step d). Appropriate correction is required.
Claim 20 is objected to because of the following informalities: replace “YH” with “HY” in three locations on page 200, below formula (B) or change on formula (B). Appropriate correction is required.
Claim 20 is objected to because of the following informalities: replace “: The” with “, the” on page 201, 1st line. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: replace “: A” with “, a” on page 201, 2nd line. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
The phrase “comprising the steps of a)… of method B” is vague, see line 11 on page 202. Step a) is not a step found within method B.
The deprotection of PG1 on page 201, last line is vague because the next step is coupling with R2-Hal. The R2 group should replace PG2, not PG1.
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 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.
Claim 20 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 8653092. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims in the ‘092 patent are drawn to the compounds of the formula (I). The instant application claims the method of making said compounds. The present application is a divisional of application 17399090 (currently abandoned), which is a divisional of application 16916168 (currently abandoned), which is a divisional of application 16163106 (currently abandoned), which is a continuation of 15613560 (currently abandoned), which is continuation of 15285614 (currently abandoned), which is a continuation of US 9499536 (application 14151796), which is a divisional of US 8653092 (application 13175050).
Claim 20 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 9499536. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims in the ‘536 patent are drawn to method of intended use with the compounds of the formula (I). The instant application claims the method of making said compounds. The present application is a divisional of application 17399090 (currently abandoned), which is a divisional of application 16916168 (currently abandoned), which is a divisional of application 16163106 (currently abandoned), which is a continuation of 15613560 (currently abandoned), which is continuation of 15285614 (currently abandoned), which is a continuation of US 9499536 (application 14151796), which is a divisional of US 8653092 (application 13175050).
Conclusion
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 on Monday - Friday, 10:00 am to 7:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Shibuya can be reached on 571-272-0806. 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