Prosecution Insights
Last updated: July 17, 2026
Application No. 18/552,676

NOVEL FORMS OF CYCLIC DINUCLEOTIDE COMPOUNDS

Non-Final OA §103§112§DP
Filed
Sep 27, 2023
Priority
Apr 09, 2021 — provisional 63/172,823 +1 more
Examiner
MAHADEVAN, JANAKI ANANTH
Art Unit
1637
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Merck Sharp & Dohme LLC
OA Round
1 (Non-Final)
Grant Probability
Favorable
1-2
OA Rounds

Examiner Intelligence

Grants only 0% of cases
0%
Career Allowance Rate
0 granted / 0 resolved
-60.0% vs TC avg
Minimal +0% lift
Without
With
+0.0%
Interview Lift
resolved cases with interview
Typical timeline
Avg Prosecution
8 currently pending
Career history
13
Total Applications
across all art units

Statute-Specific Performance

§103
57.1%
+17.1% vs TC avg
Black line = Tech Center average estimate • Based on career data from 0 resolved cases

Office Action

§103 §112 §DP
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 . Status of Claims/Application The preliminary amendment dated 09/27/2023 is acknowledged. Claims 3 – 13, and 15 – 19 are amended. Claims 22 – 29 have been canceled. Claims 1 – 21 are currently pending and are examined on the merits herein. Priority Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. The instant application is a National Stage Application of PCT/ US2022/023247, filed on 04/04/2022, and claims domestic benefit to U.S. provisional application no. 63/172,823, filed on 04/09/2021. Information Disclosure Statement The information disclosure statement (IDS) submitted in the instant application on 06/06/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Specification The use of the term Bio-rad, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks. The specification recites “Form I was produced by crystallization from the aqueous extract in Preparatory Example 12” (pg. 46, lines 21 – 22), and “Form III was produced by dissolving amorphous form of Compound A (from Preparatory Example 12, 2.5g)” (pg. 47, lines 12 – 13). However, the specification does not provide a Preparatory Example 12. 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. Claims 17, 20, and 21 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 17 recites the broad recitation “an X-ray powder diffraction containing at least 4 of the following 2θ values”, and the claim also recites “an X-ray powder diffraction containing at least 2 of the following 2θ values” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claim 20 recites “The pharmaceutical composition of claim 20, wherein…”. It is indefinite as the claim depends on self. As Claim 19 recites “A pharmaceutical composition”, claim 20 could be amended as “The pharmaceutical composition of claim 19”. For examining purposes, claim 20 is considered to be dependent on claim 19. Claim 21 recites “The pharmaceutical composition of claim 20”. As Claim 20 is indefinite, the dependent claim 21 is also indefinite. The following is a quotation of 35 U.S.C. 112(d): (d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph: Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 recites “The crystalline compound of claim 10 characterized by an X-ray powder diffraction containing at least 3 of the following 2θ values…” and recites “about 21.81° 2θ” among others. As Claim 10 does not recite the value, claim 11 fails to further limit claim 10. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Claim Rejections - 35 USC § 103 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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claims 1, and 19 – 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0044206 (IDS 06/06/2024). US’206 teaches cyclic di-nucleotide compounds and derivatives thereof that may be useful as STING (Stimulator of Interferon Genes) agonists that activate the STING pathway, and relates to processes for the synthesis and to uses of such cyclic di-nucleotide compounds (pg. 1, [0002]). A specific compound taught is: PNG media_image1.png 250 272 media_image1.png Greyscale Example 247 (pg. 350, [0764]). US’206 teaches compounds having the above structures and pharmaceutically acceptable salts, hydrates, solvates, or prodrugs thereof (pg. 78, col. 2, [0097]). US’206 teaches that absolute stereochemistry may be determined by X-ray crystallography of crystalline products or crystalline intermediates, which are derivatized, if necessary, with a reagent containing a stereogenic center of known configuration. Alternatively, absolute stereochemistry may be determined by Vibrational Circular Dichroism (VCD) spectroscopy analysis. US’206 includes all such isomers, as well as salts, solvates (which includes hydrates) and solvated salts of such racemates, enantiomers, diastereomers and tautomers and mixtures thereof (pg. 169, col. 2, [0135]). US’206 teaches that pharmaceutically acceptable salts are suitable for administration to a patient, preferably, a human. Suitable salts include acid addition salts that may, for example, be formed by mixing a solution of a compound with a solution of a pharmaceutically acceptable acid such as hydrochloric acid, sulfuric acid, acetic acid, trifluoroacetic acid, or benzoic acid. Compounds carrying an acidic moiety can be mixed with suitable pharmaceutically acceptable salts to provide, for example, alkali metal salts (e.g., sodium or potassium salts), alkaline earth metal salts (e.g., calcium or magnesium salts), and salts formed with suitable organic ligands such as quaternary ammonium salts. Also, in the case of an acid (—COOH) or alcohol group being present, pharmaceutically acceptable esters can be employed to modify the solubility or hydrolysis characteristics of the compound (pg. 170, col. 1, [0139]). US’206 teaches a pharmaceutical composition, said pharmaceutical composition comprising: (a) a compound or a pharmaceutically acceptable salt, hydrate, solvate, or prodrug thereof; and (b) a pharmaceutically acceptable carrier (pg. 503, col. 2, claim 25). US’206 teaches that the compounds may be administered by any suitable route including oral and parenteral administration. Parenteral administration is typically by injection or infusion and includes intravenous, intramuscular, and subcutaneous injection or infusion (pg. 174, col. 2, [0154]). US’206 teaches solid dosage form such as a tablet or capsule comprising an effective amount of a compound and a diluent or filler (pg. 176, col. 1, [0168]). US’206 teaches that the compositions for parenteral administration include aqueous and non-aqueous sterile injection solutions which may contain anti-oxidants, buffers, bacteriostats, and solutes that render the formulation isotonic with the blood of the intended recipient (pg. 176, col. 2, [0172]). The teachings of US’206 differ from that of the instantly claimed invention in that US’206 does not exemplify that the compound Example 247 is a crystalline compound, a pharmaceutical composition comprising of the crystalline compound Example 247 and a pharmaceutically acceptable carrier, wherein the pharmaceutical composition is a solid dosage form for oral administration, or the pharmaceutical composition is a sterile solution for parenteral, intratumoral, intravenous, or intramuscular administration. Regarding claims 1, and 19, it would have been obvious before the effective filing date of the claimed invention to synthesize the crystalline form of the compound Example 247, and a pharmaceutical composition comprising the crystalline compound and a pharmaceutically acceptable carrier as taught by US’206 to arrive at the crystalline compound, and the pharmaceutical composition of the claimed invention. It would be prima facie obvious for one of ordinary skill in the art to make a crystalline form as US’206 teaches the synthesis of the compound Example 247. It would be prima facie obvious to provide a pharmaceutical composition comprising of the crystalline compound as US’206 teaches a pharmaceutical composition comprising of the compound and a pharmaceutically acceptable carrier in many embodiments. One of ordinary skill in the art would have a reasonable expectation of success because US’206 teaches that absolute stereochemistry may be determined by X-ray crystallography of crystalline products or crystalline intermediates, which are derivatized, if necessary, with a reagent containing a stereogenic center of known configuration (pg. 169, col. 2, [0135]), and a pharmaceutical composition, said pharmaceutical composition comprising: (a) a compound or a pharmaceutically acceptable salt, hydrate, solvate, or prodrug thereof; and (b) a pharmaceutically acceptable carrier (pg. 503, col. 2, claim 25). Regarding claims 20, and 21, it would have been obvious before the effective filing date of the claimed invention to prepare a pharmaceutical composition comprising of the compound Example 247, taught by US’206, as a solid dosage form for oral administration, or as a sterile solution for parenteral, intratumoral, intravenous, or intramuscular administration to arrive at the claimed invention. It would be prima facie obvious for one of ordinary skill in the art to provide a pharmaceutical composition comprising the compound Example 247 as a solid dosage form for oral administration, or as a sterile injection solution for parenteral administration as taught by US’206. One of ordinary skill in the art would have a reasonable expectation of success because US’206 teaches a pharmaceutical composition could be administered as solid dosage form such as a tablet or capsule comprising an effective amount of a compound and a diluent or filler (pg. 176, col. 1, [0168]), and the compositions for parenteral administration include aqueous and non-aqueous sterile injection solutions which may contain anti-oxidants, buffers, bacteriostats, and solutes that render the formulation isotonic with the blood of the intended recipient (pg. 176, col. 2, [0172]). Claims 2 – 18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0044206 (IDS 06/06/2024) as applied to claims 1, and 19 – 21 above, and further in view of Berge et al (Pharmaceutical Salts, Journal of Pharmaceutical Sciences, Vol. 66, No. 1, January 1977, 1 – 19) (PTO-892). The teachings of US’206 are as discussed in the 103 rejection above. The teachings of US’206 differ from that of the instantly claimed invention in that US’206 does not teach mono-sodium and di-sodium salts of the compound A of the instant disclosure, and the characterization of the crystalline compounds by X-ray powder diffraction. Berge is a review about pharmaceutical salts. It presents an overview of the many different salts from which new drug candidates can be chosen and assemble data for a rational basis for selecting a suitable salt form (pg. 1, col.1, para. 3). Berge teaches that because of simple availability and physiological reasons, the monoprotic hydrochlorides have been by far the most frequent choice of the available anionic salt-forming radicals, outnumbering the sulfates nearly six to one. For similar reasons, sodium has been the most predominant cation (pg. 2, col. 2, para. 1). Berge teaches several sodium salts of pharmaceuticals (whole article) and disodium salts (Table X, pg. 14, col. 2 and pg. 15, col. 1, para. 2). Regarding claims 2, and 14, it would have been obvious to combine US’206 and Berge before the effective filing date of the claimed invention by making sodium salts as taught by Berge of the crystalline form of compound, Example 247 of US’206 to arrive at the claimed invention. It would have been prima facie obvious for one of ordinary skill in the art to modify the compound, Example 247 into its sodium salts because Berge teaches that because of simple availability and physiological reasons, sodium has been the most predominant cation in the section on potentially useful salts (pg. 2, col.1) , and it would be a simple combination of prior art elements according to known methods to yield predictable results (See MPEP 2143(I)(A)). One of ordinary skill in the art would have a reasonable expectation of success because US’206 teaches the successful synthesis and isolation of compounds, and pharmaceutically acceptable salts, hydrates, solvates, or prodrugs thereof, and that compounds carrying an acidic moiety can be mixed with suitable pharmaceutically acceptable salts to provide, for example, alkali metal salts (e.g., sodium or potassium salts), alkaline earth metal salts (e.g., calcium or magnesium salts), and salts formed with suitable organic ligands such as quaternary ammonium salts (pg. 170, col. 1, [0139]). Regarding claims 3 – 13, and 15 – 18, the instant disclosure states that the compounds were prepared by the process as set forth in WO2017/027646 and US2017/0044206 (pg. 19, line 13 – 14). The crystallization process disclosed in pgs. 46 and 47 of the instant disclosure is not taught by US’206. However, as the instant specification teaches that the method for preparation of the compound is as disclosed in US’206, then one would also expect the compound of US’206 to have the recited X-ray powder diffraction peaks in claims 3 -13, and 15 -18. MPEP 2112 section I recites "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. Furthermore, MPEP 2112.01 section II recites "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. 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 § 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, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 4, and 25 – 30 of U.S. Patent No. 10,106,574 (IDS 06/06/2024). Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope. The instant application claims a crystalline compound having the structural formula: PNG media_image2.png 188 310 media_image2.png Greyscale Patent ‘574 claims a compound. One of which is: PNG media_image3.png 322 248 media_image3.png Greyscale (Claims 1 – 3, and 25 – 30) A pharmaceutical composition comprising the compound and a carrier (claim 4). While Patent ‘574 claims the instantly claimed compound and a pharmaceutically acceptable salt, and pharmaceutical compositions, Patent ‘574 does not claim a crystalline form of the compound, and a pharmaceutical composition comprising the crystalline form of the compound. It would have been obvious before the effective filing date of the claimed invention to synthesize the crystalline form of the compound, and a pharmaceutical composition comprising the crystalline compound and a pharmaceutically acceptable carrier of the compound claimed by Patent’574 to arrive at the crystalline compound, and the pharmaceutical composition of the claimed invention. It would be prima facie obvious for one of ordinary skill in the art to make a crystalline form and have a reasonable expectation of success as Patent’574 teaches the synthesis of the compound. It would be prima facie obvious to provide a pharmaceutical composition comprising of the crystalline compound and have a reasonable expectation of success as Patent’574 teaches a pharmaceutical composition comprising of the compound and a pharmaceutically acceptable carrier. Claims 1 – 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 4, and 25 – 30 of U.S. Patent No. 10,106,574 (IDS 06/06/2024) in view of Berge et al (Pharmaceutical Salts, Journal of Pharmaceutical Sciences, Vol. 66, No. 1, January 1977, 1 – 19) (PTO-892). Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims overlap in scope. The instant application claims a crystalline compound having the structural formula: PNG media_image2.png 188 310 media_image2.png Greyscale wherein the crystalline compound is a 2-amino-9-[(2R,5R,7R,8S,10R,12aR,14R,15S,15aR,16R)-14-(6-amino-9H-purin-9-yl)-15,16-difluoro-2,10-dihydroxy-2,10-disulfidooctahydro-12H-5,8- methanofuro[3,2-1][1,3,6,9,11,2,10] pentaoxa-diphosphacyclotetradecin-7-yl]-1,9 dihydro-6H-purin-6-one mono-sodium or di-sodium salt hydrate, and is characterized by X-ray powder diffraction peaks. Patent ‘574 claims a compound. One of which is: PNG media_image3.png 322 248 media_image3.png Greyscale (Claims 1 – 3, and 25 – 30) A pharmaceutical composition comprising the compound and a carrier (claim 4). While Patent ‘574 claims the instantly claimed compound and a pharmaceutically acceptable salt, and pharmaceutical compositions, Patent ‘574 does not teach a mono-sodium or di-sodium salt hydrate, and the characterization of the crystalline compounds by X-ray powder diffraction. Berge is a review about pharmaceutical salts. It presents an overview of the many different salts from which new drug candidates can be chosen and assemble data for a rational basis for selecting a suitable salt form (pg. 1, col.1, para. 3). Berge teaches that because of simple availability and physiological reasons, the monoprotic hydrochlorides have been by far the most frequent choice of the available anionic salt-forming radicals, outnumbering the sulfates nearly six to one. For similar reasons, sodium has been the most predominant cation (pg. 2, col. 2, para. 1). Berge teaches several sodium salts of pharmaceuticals (whole article) and disodium salts (Table X, pg. 14, col. 2 and pg. 15, col. 1, para. 2). Regarding claims 2, and 14, it would have been obvious to combine Patent ‘574 and Berge before the effective filing date of the claimed invention by making sodium salts as taught by Berge of the compound in claims 1 – 3, and 25 – 30 of the Patent ‘574 to arrive at the claimed invention. It would have been prima facie obvious for one of ordinary skill in the art to modify the compound into its sodium salts because Berge teaches that because of simple availability and physiological reasons, sodium has been the most predominant cation in the section on potentially useful salts (pg. 2, col.1), and it would be a simple combination of prior art elements according to known methods to yield predictable results (See MPEP 2143(I)(A)). One of ordinary skill in the art would have a reasonable expectation of success because Patent ‘574 teaches the successful synthesis and isolation of compounds, and pharmaceutically acceptable salts, hydrates, solvates, or prodrugs thereof, and that compounds carrying an acidic moiety can be mixed with suitable pharmaceutically acceptable salts to provide, for example, alkali metal salts (e.g., sodium or potassium salts), alkaline earth metal salts (e.g., calcium or magnesium salts), and salts formed with suitable organic ligands such as quaternary ammonium salts. Regarding claims 3 – 13, and 15 – 18, the instant disclosure states that the compounds were prepared by the process as set forth in WO2017/027646 and US2017/0044206 (pg. 19, line 13 – 14), related to Patent’574. The crystallization process disclosed in pgs. 46 and 47 of the instant disclosure is not taught by US’206/Patent’574. However, as the instant specification teaches that the method for preparation of the compound is as disclosed in US’206/Patent’574, then one would also expect the compound of Patent’574 to have the recited X-ray powder diffraction peaks in claims 3 -13, and 15 -18. MPEP 2112 section I recites "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. Furthermore, MPEP 2112.01 section II recites "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Conclusion Claims 1 – 21 are rejected. No claims are allowed. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANAKI ANANTH MAHADEVAN whose telephone number is (571)272-0230. The examiner can normally be reached Monday-Friday 8-5PM. 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, Scarlett Goon can be reached at 5712705241. 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. /J.A.M./Examiner, Art Unit 1693 /SCARLETT Y GOON/Supervisory Patent Examiner Art Unit 1693
Read full office action

Prosecution Timeline

Sep 27, 2023
Application Filed
Jun 29, 2026
Non-Final Rejection mailed — §103, §112, §DP (current)

Strategy Recommendation AI-generated — please review before filing

Get a prosecution strategy drawn from examiner precedents, rejection analysis, and claim mapping.
Typically takes 5-10 seconds — AI-generated, attorney review required before filing

Prosecution Projections

1-2
Expected OA Rounds
Grant Probability
Low
PTA Risk
Based on 0 resolved cases by this examiner. Grant probability derived from career allowance rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month