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
Claims 1, 2, 11, 12, 22, 28, 30-32, 35, 36, 44, 48 and 50-58 are pending in the instant application.
Election/Restrictions
Applicant’s election without traverse of Group I,
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and the species of Compound No. 15, disclosed in Table A on page 260 (reproduced below),
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in the reply filed on June 30, 2025 is acknowledged. Upon reconsideration, the Restriction between Group I and Groups V-IX (claims 52-58) has been withdrawn. The inventions of Groups V-IX (claims 52-58) have been rejoined with Group I. The requirement is still deemed proper for the other groups and is therefore made FINAL.
Claims 35, 36, 44, 48, 50 and 51 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 30, 2025.
It is suggested that in order to advance prosecution, the non-elected subject matter in which rejoinder is not applicable be canceled if Applicant files a response to this Office Action.
Power of Attorney
Of note, there is not an attorney of record on file due to a lack of an official power of attorney of record. While a customer number has been provided on the Application Data Sheet (ADS) submitted
December 7, 2023, this is not the equivalent of a power of attorney or an authorization to act in a representative capacity. In order to expedite prosecution in the instant application, it is suggested that a power of attorney be filed as per MPEP §402 or MPEP §1807, or an Authorization to Act in a Representative Capacity be filed as per MPEP §403 in order for the Office to freely and openly discuss the merits of the case with the applicant's representative(s). Please refer to the MPEP or http://www.uspto.gov/patents/law/poafaqs.jsp#a if you have questions regarding the proper filing of a power of attorney. "
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16/978,603, filed on September 4, 2020.
This application repeats a substantial portion of prior Application No. 16/978,603, filed
November 15, 2018, and adds disclosure not presented in the prior application. Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
Applicant has added an “incorporation by reference” statement in the instant application, which statement was deleted during the prosecution of parent Application No. 16/978,603 because the “incorporation by reference” statement was deemed new matter. See pages 4-11 of the Office Action dated February 9, 2023 in Application No. 16/978,603.
Information Disclosure Statement
The Examiner has considered the Information Disclosure Statement filed on March 22, 2024. The submission is in compliance with the provisions of
37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 1, 11 and 53 are objected to because of the following informalities:
in claim 1, under the definition of X1 and X2, an “or” should be added before “a (C1-C6)alkyl group”;
in claim 11, under the definition of X1 and X2, an “or” should be added before “a (C1-C6)alkyl group”; and
in claim 53, after the definition of the R5 variable, the period after “alkyl group” should be changed to a semi-colon (line 2 of page 10).
Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of
35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 11, 31, 32, 52, 55 and 56 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 4 and 13-17, respectively, of prior U.S. Patent No. 11,897,911. This is a statutory double patenting rejection.
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 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 nonstatutory 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 nonstatutory 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, 11, 12, 22, 28, 30-32 and 52-58 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,897,911. Although some of the claims at issue are not identical, they are not patentably distinct from each other because the inventions under examination in the instant application were elected and examined in Parent Application No. 16/978,603 and patented in U.S. Patent No. 11,897,911. Therefore, the claims in U.S. Patent No. 11,897,911 anticipate and/or render obvious the instant claimed invention.
Claims 1, 11, 12, 22, 28, 31 and 32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6 and 11 of copending Application No. 18/248,988 (reference application), US 2024/0092819. Although the claims at issue are not identical, they are not patentably distinct from each other because there is an overlap of subject matter claimed in the copending application with the subject matter instantly claimed. See especially claim 1 in copending Application No. 18/248,988. Further, the specification of copending Application No. 18/248,988 discloses compounds embraced by its claims, such as its claim 1. See, for instance, Entry 2 on page 39 of the specification in copending Application No. 18/248,988, which Entry 2 would anticipate the instant claimed invention.
The instant application and copending Application No. 18/248,988 share at least one common inventor. The instant application is not related to copending Application No. 18/248,988 and thus, no 35 USC 121 shield exists here. See MPEP 804.01. Therefore, the claims in copending Application No. 18/248,988 render obvious the instant claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The elected species of Compound No. 15, disclosed in Table A on page 260, is not allowable. See the double patenting rejections above over the claims in Parent U.S. Patent No. 11,897,911.
Reminder to Applicant
As a reminder, Applicant should specifically point out the support in the original disclosure {i.e., page number(s) and line number(s)} for any new claims or amended claims and for any amendments made to the disclosure. Making generic statements such as “all amendments are fully supported in the originally filed disclosure or the originally filed claims” without specifying page numbers and originally filed claim numbers are insufficient. See MPEP §714.02 and MPEP §2163.06(I).
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to:
Laura L. Stockton
(571) 272-0710.
The examiner can normally be reached on Monday-Friday from 8:30 am to 6 pm, Eastern Standard Time.
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 use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
Joseph K. McKane can be reached on 571/272-0699. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LAURA L STOCKTON/ Primary Examiner, Art Unit 1626 Work Group 1620
Technology Center 1600
August 28, 2025
Book XXVII, page 78