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
Priority and Status of Claims
1. This application is a 371 of PCT/US22/34379 06/21/2022, which claims benefit of the provisional application: 63213086 06/21/2021
2. Claims 1-425 are pending in the application.
3. 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 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.
Claim Rejections - 35 USC § 102
4. 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.
Claim 1 is rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Barnes et al. US 2010/0197744 A1.
Applicant claim a compound of formula (I), i.e.,
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, wherein R1 or Rx is hydrogen or halogen, and R2 or R3 is hydrogen, alkyl or alkoxy, see claim 1.
Barnes et al. ‘239 disclose four compounds, i.e.,
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278
470
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262
498
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, see
column 1. They clearly anticipate the instant compounds of formula (I), wherein R1 or Rx is hydrogen or halogen, and R2 or R3 is hydrogen, alkyl or alkoxy.
Claim Rejections - 35 USC § 103
5. The following is a quotation of 35 U.S.C. 103(a) 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1, 408 and 418 are rejected under 35 U.S.C. 103(a) as being obvious
over Barnes et al. US 2008/0262050 A1.
Applicant claim a compound/composition of formula (I), i.e.,
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, wherein R1 or Rx is hydrogen or halogen, and R2 or R3 is hydrogen, alkyl or alkoxy, see claims 1 and 408. The instant compound of formula (I) is used for treating type 2 diabetes, see claim 418.
Determination of the scope and content of the prior art (MPEP §2141.01)
Barnes et al. ‘050 disclose a compound/composition of formula (IB), i.e.,
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230
318
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, wherein R1 is hydrogen, R2 and R3 are hydrogen, halogen, alkoxy, aryl, cycloalkyl, or alkyl, and methods of use for treating type 2 diabetes, see claims 5 and 36 in columns 50 and 54.
Determination of the difference between the prior art and the claims (MPEP §2141.02)
The difference between instant claims and Barnes et al. ‘050 is that the instant
claims are embraced within the scope of Barnes et al. ‘050. Barnes et al. ‘050 compounds/compositions read on the instant claims 1, 408 and 418.
Finding of prima facie obviousness-rational and motivation (MPEP §2142-2143)
One having ordinary skill in the art would find the claims 1, 408 and 418 prima facie obvious because one would be motivated to employ the compound/composition and methods of use of Barnes et al. ‘050 to obtain instant invention.
The motivation to make the claimed compounds/compositions and methods of use derived from the known compound/composition and methods of use of Barnes et al. ‘050 would possess similar activity to that which is claimed in the reference.
Double Patenting
6. 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. 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 nonstatutory 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).
6.1 Claim 1 is provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 1 of Xiong et al. US 10,954,202. Although the conflicting claims are not identical, they are not patentably distinct from each other and reasons are as follows.
Applicant claim a compound/composition of formula (I), i.e.,
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352
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, wherein R1 or Rx is hydrogen or halogen, and R2 or R3 is hydrogen, alkyl, alkoxy or -L-Z and L is -U-V-W-X-Y-, see claim 1.
Xiong et al. ‘202 claim a compound, i.e.,
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148
270
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, see claim 1 in column 323.
The difference between instant claims and Xiong et al. ‘202 is that the instant claim is embraced within the scope of Xiong et al. ‘202.
One having ordinary skill in the art would find the claim 1 prima facie obvious because one would be motivated to employ the compound of Xiong et al. ‘202 to obtain instant invention.
The motivation to make the claimed compounds derived from the known compound of Xiong et al. ‘202 would possess similar activity to that which is claimed in the reference.
6.2 Claim 1 is provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 1 of Veits et al. co-pending application No. 17/787,828. Although the conflicting claims are not identical, they are not patentably distinct from each other and reasons are as follows.
Applicant claim a compound/composition of formula (I), i.e.,
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352
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, wherein R1 or Rx is hydrogen or halogen, and R2 or R3 is hydrogen, alkyl, alkoxy or -L-Z and L is -U-V-W-X-Y-, see claim 1.
Veits et al. ‘828 claims a compound of formula (I), i.e.,
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374
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, wherein R1 or Rx is hydrogen, R2 or R3 is
hydrogen, alkyl, cycloalkoxy, alkoxy or -L-Z and L is -U-V-W-X-Y-, see claim 1.
The difference between instant claims and Veits et al. ‘828 is that the instant claim is embraced within the scope of Veits et al. ‘828.
One having ordinary skill in the art would find the claim 1 prima facie obvious because one would be motivated to employ the compound of Veits et al. ‘828 to obtain instant invention.
The motivation to make the claimed compounds derived from the known compounds of Veits et al. ‘828 would possess similar activity to that which is claimed in the reference.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claim Objections
Claim 2-407, 409-417 and 419-425 are objected to as being dependent on
rejected claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REI TSANG SHIAO whose telephone number is (571)272-0707. The examiner can normally be reached on 8:30 am-5:00 pm.
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/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1691
March 09, 2026