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, 6-14, 16-19 and 21-26 are pending and are under consideration in the instant office action.
Instant claims are found to be free of art and allowable, except for the ODP rejection of claims 7, 16-18 and 25-26 over copending claims in application 18/558,166. In the interest of compact prosecution, examiner contacted the applicants with a proposal for them to file a terminal disclaimer to overcome the double patent rejection, however the applicants preferred that the examiner send an action. Please see the attached interview summary for details.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/30/2023 complies with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609. Accordingly, it has been placed in the application file and the information therein has been considered as to the merits. See attached copy of the PTO-1449.
Priority
This application is a U.S. National phase application under 35 U.S.C 371 of PCT application PCT/EP2022/061873, filed 05/03/2022, which claims benefit under Title 35 U.S.C 119 to European patent application no. EP21181594.9 filed on 06/24/2021, Indian Patent application IN202111020227 filed 05/03/2021, United kingdom patent application GB2204981.1 filed 04/05/2022. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Allowable claims
Claims 6-14 and 21-24 are found to be allowable.
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.
Claims 7, 16-18 and 25-26 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-4, 14-15, 18, 20-21, 23-24, 27-29, 31, 33—34, 36-27, 41-45 of copending Application No. 18/558,166 (‘166).
Instant claims are drawn to a compound of formula (I) shown below,
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390
371
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A method for treating an infection or disease caused by Gram-negative bacteria and a pharmaceutical composition comprising the compound of formula (I)
Claims of ‘166 are drawn to a process for the production of compound (I) of the following formula
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371
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Although the conflicting claims are not identical, they are not patentably distinct from each other because application ‘166, claims obvious subject matter. ‘166 claims a methods for the production of Compound (I) which is the same compound instantly claimed and as such given the teachings of ‘166 , the compound and composition of instant claims is prima facia obvious to a person of ordinary skill in the art .
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented
Conclusion
Claims 7, 16-18 and 25-26 are rejected, Claims 6-14 and 21-24 are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAVITHA RAO whose telephone number is (571)270-5315. The examiner can normally be reached on Mon-Fri 7 am to 4 pm..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dierdre (Renee) Claytor can be reached on (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SAVITHA M RAO/ Primary Examiner, Art Unit 1691
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