DETAILED ACTION
Claims 1 and 4-47 are pending in the present application.
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 .
Reissue Applications
The present reissue application is a reissue of USPN 11,261,178 (the ‘178 patent) issued from Application No. 16/907,548 (the ‘548 application) filed on June 22, 2020.
Claim Rejections - 35 USC § 251
Claims 14-17 and 27-47 are rejected under 35 U.S.C. 251 for lack of any defect in the original patent and lack of any error in obtaining the original patent. See MPEP 1412.01.II.
During prosecution of the ‘548 application which became the ‘178 patent, a Restriction Requirement was mailed on June 3, 2021 with respect to claims 87-113 based on the following six groups:
Group I: Claims 86-96 drawn to various compounds which are intermediates.
Group II: Claim 97 drawn to additional intermediate compounds.
Group III: Claims 98-102 drawn to a process for the preparation of compounds described in claim 98.
Group IV: Claims 103-105 drawn to a process for the preparation of compounds described in claim 103.
Group V: Claims 106 and 107 drawn to a process for the preparation of compounds described in claim 106.
Group VI: Claims 108-113 drawn to a compound of formula (I).
On December 2, 2021, the Applicant elected Group III (claims 98-102) along with an election of species of compound 86 in the specification.
On December 22, 2021, a Notice of Allowability was mailed with an Examiner’s Amendment authorized by the Applicant cancelling claims 86-97 and 103-113. None of claims in the ‘178 patent are directed to a compound or a composition.
As set forth in MPEP 1412.01(I) (emphasis added):
Where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a continuing application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application. A reissue applicant’s failure to timely file a continuing application is not considered to be error causing a patent granted on the elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim. Accordingly, this is not correctable by reissue of the original patent under 35 U.S.C. 251. See In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Weiler, 790 F.2d 1576, 229 USPQ 673 (Fed. Cir. 1986); In re Orita, 550 F.2d 1277, 1280, 193 USPQ 145, 148 (CCPA 1977); see also In re Mead, 581 F.2d 251, 198 USPQ 412 (CCPA 1978). In this situation, the reissue claims should be rejected under 35 U.S.C. 251 for lack of any defect in the original patent and lack of any error in obtaining the original patent. Compare with In re Doyle, 293 F.3d 1355, 63 USPQ2d 1161 (Fed. Cir. 2002) where the court permitted the patentee to file a reissue application to present a so-called linking claim, a claim broad enough to read on or link the invention elected (and patented) together with the invention not elected. The non-elected invention(s) were inadvertently not filed as a divisional application.
Reissue claims 14-17 and 27-30 are drawn to oral pharmaceutical compositions comprising the compound prepared by the process according to claims 6-9 and 23-26 respectively. Despite claims 14-17 and 27-30 being product by process claims, the compounds would be covered by claims 110-113 of Group VI of the Restriction Requirement of June 3, 2021.
Reissue claims 31-40 are drawn to compounds of formula (I)* which are encompassed by claims 108-113 of Group VI of the Restriction Requirement of June 3, 2021.
Reissue claims 41-47 are drawn to various compounds that are recited as the 13th-15th compounds of claim 87 of Group I of the Restriction Requirement of June 3, 2021.
Since reissue claims 14-17 and 27-40 would have been grouped with Group VI and reissue claims 41-47 would have been grouped with Group I, they would not have been examined with the elected method claims. Furthermore, Applicant did not file a continuing application directed to the non-elected compounds and compositions.
As stated above, a restriction requirement was made in the ‘548 application, Applicant permitted the elected method of making claims to issue in the ‘178 patent without filing a continuing application to pursue claims directed to the compounds and compositions as in claims 87 and 108-113 of the Restriction Requirement of June 3, 2021 or as in reissue claims 17-20 and 27-47. The reissue applicant’s failure to timely file a continuing application to the compounds of claims 87 and 108-113 of the Restriction Requirement of June 3, 2021 is thus not a defect in the original patent or an error in obtaining the original patent. Accordingly, such is not correctable by reissue of the original patent under 35 U.S.C. 251. Claims 17-20 and 27-47 have not been further treated on the merits.
Allowable Subject Matter
Claims 1, 4-13, and 18-26 are allowed.
Duty to Disclose
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,261,178 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
Claims 14-17 and 27-47 are rejected. Claims 1, 4-13, and 18-26 are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joseph Kosack whose telephone number is (571)272-5575. The examiner can normally be reached M-F 8:00-4:30.
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, Patricia Engle can be reached at 571-272-6660. 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.
/JOSEPH R KOSACK/Patent Reexamination Specialist
Central Reexamination Unit 3991
/Alan Diamond/
Patent Reexamination Specialist
Central Reexamination Unit 3991
Prosecution Insights