DETAILED ACTION
This action is in response to Applicant’s submission dated August 26, 2025, in which Applicant elected a species without traverse. Once this species was not found in the prior art, the full scope of the invention was searched in the art.
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 .
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. See 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) may be used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 25-26, 28, 33-34, 36, 43, 51-52, 59-60, and 68-73 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-16 and 19-25 of Fisher, et al., United States Patent No. 11,891,399. Although the conflicting claims are not identical, they are not patentably distinct from each other because the subject matter embraced in the instant claims is also embraced in United States Patent No. 11,891,399. The claims of the reference and the instant claims are obvious variants of one another because there is substantial overlap between instant L1, z1, L2, Z, R1, R2, R3, R4, R1A to R4B, X to X4, n1, n2, m1, m2, v1, v2, and z1, and their corresponding positions in the reference when R2 of the reference is a ring (cycloalkyl, heterocycloalkyl, aryl, or heteroraryl).
Claims 25-26, 28-30, 33-36, 43, 51-52, 59-60, and 68-73 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-25 and 29-50 of Fisher, et al., United States Patent No. 11,008,325. Although the conflicting claims are not identical, they are not patentably distinct from each other because the subject matter embraced in the instant claims is also embraced in United States Patent No. 11,008,325. The claims of the reference and the instant claims are obvious variants of one another because there is substantial overlap between instant L1, z1, L2, Z, R1, R2, R3, R4, R1A to R4B, X to X4, n1, n2, m1, m2, v1, v2, and z1, and their corresponding positions in the reference.
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