DETAILED ACTION
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 .
Claims 1, 8, 10, 14, 36-40, 53, 55, 56, and 58-61 are pending in the instant application. Claims 39, 40, 53, 55, and 56 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected subject matter. Claims 1, 8, 10, 14, 36-38, and 58-61 are rejected.
Response to Amendment and Arguments/Remarks
The amendment and arguments/remarks filed on March 10, 2026 have been fully considered and entered into the application. With regards to nonstatutory double patenting rejection as being unpatentable U.S. Patent No. 11,130,731, Applicant argues that a terminal disclaimer has been provided. However, a terminal disclaimer has not been provided; therefore, the rejection is maintained and described below. With regards to the nonstatutory double patenting rejection as being unpatentable U.S. Patent No. 10,538,487, the grounds for rejection are moot in view of Applicant’s amendment and the rejection has been withdrawn. With regards to the 35 U.S.C. 102(a)(1) rejection as being anticipated by Waterman et al., the grounds for rejection are moot in view of Applicant’s amendment and the rejection has been withdrawn. With regards to the claim objections, the grounds for objection are moot in view of Applicant’s amendment and the objections have been withdrawn.
However, this amendment has necessitated new grounds of rejection under 35 35 U.S.C. 102(a)(1), which are described below.
It is noted that the election of species requirement has been withdrawn (i.e., the full scope of the subject matter of claims 1, 8, 10, 14, 36-38, and 58-61 has been searched and examined in its entirety).
New Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 8, 10, 14, 37, 38, and 58-61 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 92/08694.
WO 92/08694 discloses compounds of formula (I) and pharmaceutical compositions thereof (see abstract), such as the compounds Example 38 and 39 (see page 29) which anticipate compounds and pharmaceutical compositions thereof of the instant claims wherein R2 is 2,6-diisopropylphenyl and R1 is pyrrolidine and piperidine, respectively.
Maintained 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 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 8, 10, 14, 36-38, and 58-61 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29, 36 and 37 of U.S. Patent No. 11,130,731. Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons given below.
U.S. Patent No. 11,130,731 discloses compounds which are used for the same purpose as those of the instant claims (i.e., the inhibition of activation of the NLRP3 inflammasome). The compounds and pharmaceutical compositions thereof of the instant claims fit within the scope of those of U.S. Patent No. 11,130,731. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention through routine experimentation to make and use a compound of the instant claims in view of the reference with a reasonable expectation of success. The motivation would have been to make additional pharmacological compounds which could be used for the quoted purpose. Therefore, a prima facie case of obviousness has been established.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 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 CFR 1.17(a)) pursuant to 37 CFR 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTIN ANN VAJDA whose telephone number is (571)270-5232. The examiner can normally be reached Mon-Fri 6:00-4:00.
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 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, James Alstrum-Acevedo can be reached on 571-272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622
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