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 .
Applicant’s Response Dated September 23, 2025
In the Response dated September 23, 2025, no claim was amended, added, or canceled. Claims 1-46 are pending. An action on the merits of claims 1-46 is contained herein.
The rejection of claims 1-46 under 35 U.S.C. 101 as claiming the same invention as that of claims 1-23 and 25-44 of prior U.S. Patent No. 11,981,698 B2 has been withdrawn in view of applicant’s argument that the claims are not coextensive in scope.
The rejection of claims 1-4, 6, 10-23, 25, 28, 31-35, 37-40, and 43 on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 10,280,190 B2 is maintained for the reasons of record as set forth in the Office Action dated April 23, 2025.
The rejection of claims 1-8 and 10-43 on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 14-20 of U.S. Patent No. 10,815,262 B2 has been rendered moot in view of the Terminal Disclaimer filed September 23, 2025.
The rejection of claims 1-8 and 10-43 on the ground of nonstatutory double patenting as being unpatentable over claims 4-13 and 18-19 of U.S. Patent No. 11,584,770 B2 has been rendered moot in view of the Terminal Disclaimer filed September 23, 2025.
Rejections Set Forth in the Office Action Dated April 23, 2025
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6, 10-23, 25, 28, 31-35, 37-40, and 43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 10,280,190 B2.
Applicant's arguments filed September 23, 2025 have been fully considered but they are not persuasive. Applicant argues that the ‘190 patent does not qualify as prior art.
Applicant’s argument has been fully considered; however, the argument is not germane. The ‘190 patent and the instant application have at least one common inventor and a common assignee. Thus, the rejection is maintained for the reasons of record.
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 1-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 and 25-44 of prior U.S. Patent No. 11,981,698 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because the only difference between the claims is that the instant claims depict stereoisomers; however, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties. Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
Conclusion
Claims 1-46 are pending. Claims 1-43 are rejected. Claims 44-46 are allowed.
Contacts
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK T LEWIS whose telephone number is (571)272-0655. The examiner can normally be reached Monday to Friday, 10 AM to 4 PM EST (Maxi Flex).
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, Deirdre Claytor can be reached at (571) 272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK T LEWIS/Primary Examiner, Art Unit 1691
/PL/
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