DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions. Claims 24-65 are pending in this application.
Election/Restrictions
Applicant’s election with traverse of Group I in the reply filed on 01/12/2026 is acknowledged. Upon further review of the case, it is deemed necessary to withdraw the Restriction Requirement dated on 10/17/2025.
Information Disclosure Statement
3. Applicant’s Information Disclosure Statement, filed on 03/01/2024 and 06/07/2024 has been acknowledged. Please refer to Applicant’s copies of the 1449 submitted herewith.
Double Patenting
4. 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. 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/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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
5. Claims 24-65 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 9,150,591. Although the claims at issue are not identical, they are not patentably distinct from each other because there is significant overlap between applicants' claims and claims 1-29 of U.S. Patent No. 9,150,591. Note that patent ‘591 is drawn to a method of treatment that are the same as applicants. The obviousness-type double patenting rejection is proper because this case is a continuation case and the specification of patent ‘591 discloses the claimed subject matter.
6. Claims 24-65 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 9,499,568. Although the claims at issue are not identical, they are not patentably distinct from each other because there is overlap between applicants' claims and claims 1-17 of U.S. Patent No. 9,499,568. Note that patent ‘568 is drawn to a method of treatment using that are the same as applicants. The obviousness-type double patenting rejection is proper because this case is a continuation case and the specification of patent ‘568 discloses the claimed subject matter.
7. Claims 24-65 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 9,884,875. Although the claims at issue are not identical, they are not patentably distinct from each other because there is overlap between applicants' claims and claims 1-17 of U.S. Patent No. 9,884,875. Note that patent ‘875 is drawn to a method of treatment using the fused thiazine compounds that are the same as applicants. Note that patent ‘875 recite in claim 1 a method for treating Alzheimer’s disease using the elected Group I compound that is the same as the instant claims 39 and 50. The obviousness-type double patenting rejection is proper because this case is a continuation case and the specification of patent ‘875 discloses the claimed subject matter.
8. Claims 24-65 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 10,654,874. Although the claims at issue are not identical, they are not patentably distinct from each other because there is significant overlap between applicants' claims and claims 1-17 of U.S. Patent No. 10,654,874. Note that patent ‘874 recite in claim 1 a method for treating cognitive impairment associated with schizophrenia using the elected Group I compound that is the same as the instant claims 39 and 50. The obviousness-type double patenting rejection is proper because this case is a continuation case and the specification of patent ‘874 discloses the claimed subject matter.
9. Claims 24-65 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11,279,713. Although the claims at issue are not identical, they are not patentably distinct from each other because there is significant overlap between applicants' claims and claims 1-5 of U.S. Patent No. 11,279,713. Note that patent ‘713 recite in claim 1 the claimed compound that is the same as the instant claim 24. The obviousness-type double patenting rejection is proper because this case is a continuation case and the specification of patent ‘713 discloses the claimed subject matter.
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kahsay Habte Ph.D. whose telephone number is (571)272-0667. The examiner can normally be reached on 8:30 - 5:00 PM.
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/Kahsay Habte/
Primary Examiner, Art Unit 1624