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 .
Status of Claims
Claims 33-37 are pending as of the response and amendments filed on 7/16/26. Claims 1-32 have been canceled.
The rejection of claim 33 under 35 USC 112(a) for reciting R3 to include CH(CN)CH3 is withdrawn in consideration of the amendments. However, a new rejection under 35 USC 112(a) is made based on the amendments, discussed below.
The 102(a)(1) rejections of previous record are withdrawn in consideration of the amendments.
The terminal disclaimer filed on 7/16/26 has not been approved, as the party identified in the terminal disclaimer is not the applicant of record. The applicant cited on the terminal disclaimer must be cited exactly as it is cited on the ADS or filing receipt, in its entirety. For reconsideration, it is requested the above deficiencies be corrected, along with resubmission of the terminal disclaimer, with no new fee required. As such, the nonstatutory double patenting rejection of record over the claims of US 11345652 is maintained.
New rejections under 35 USC 112(b), and under 35 USC 102(a)(1) are made over the amended claims, discussed below.
Claims 33-37 were examined and are rejected.
Claim Rejection-35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 33-37 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Independent claim 33 as amended recites R3 as a C5 to C7 cycloalkyl. However, while the specification as originally filed provides support to R3 as being a cyclopentane or cyclohexane ring, there is no such support for R3 being a C7 cycloalkyl. The amendment therefore introduces a new matter limitation, which is prohibited. See MPEP 2163.06(I). Claims 34-37 are rejected for depending from claim 33.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 35 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 35 depends indirectly from claim 33 and recites the limitation wherein R3 is CH(CH2)n, however, claim 33 as amended no longer explicitly includes this option. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections-35 USC § 102
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(s) 33-35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aurora Fine Chemicals, RN 1484628-88-7, publ. by CAS on 12/1/2013.
Aurora Fine Chemicals disclosed the following compound:
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. This compound is included in formula (II), having both R1 and R2=CH3; and R3=cyclopentane (R3=CH(CH2)n, wherein n=4 as recited in claim 35). Aurora Fine Chemicals therefore anticipates the claims.
Claim(s) 33-34 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aurora Fine Chemicals, RN 1546550-69-9, publ. by CAS on 2/17/2014.
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. This compound is included in formula (II), having both R1 and R2=CH3; and R3=cycloheptane. Aurora Fine Chemicals therefore anticipates the claims.
Claim(s) 33 and 36-37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Baroni et. al., Zhurnal Organicheskoi Khimii, vol. 4(1), pp. 96-100, publ. 1968. As this publication is currently unavailable, an English language abstract publ. by CAS is provided.
Baroni discloses the following compound:
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. This compound is included within formula (II), having R1=H; R2=phenyl; and R3=cyclohexane. As such, Baroni anticipates the claims.
Claim(s) 33 and 36-37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang et. al., Chemical Science, vol. 6, pp. 4674-4680, publ. 2015.
Zhang discloses the compounds shown below p. 4679, Table 3, see compounds 1’k and 1’l):
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. These compounds are included within formula II, having R1=H; R2= phenyl (1’k) and 2-furyl (1’l); and R3= isobutyl. Zhang therefore anticipates the claims.
Claim Rejections-Nonstatutory 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 33-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11345652 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are drawn to a method for reducing the severity of convulsant activity comprising administering compounds that overlap with those structurally of formula II of the instant claims. In particular, the compounds recited in the method of the patented claims overlap with those of formula II of the instant claims when R1 and R2=both methyl; R3=-CH2SC6H5, CH=CHC(O)-O-C6H5, or CH=CHC(O)-O-C4H9. Therefore, the instant and patented claims are not patentably distinct, since the compounds of formula II of the instant claims are required to practice the method of the patented claims.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH PIHONAK whose telephone number is (571)270-7710. The examiner can normally be reached Monday-Friday 9:00-5:30 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney Klinkel can be reached at 571-270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SARAH . PIHONAK
Primary Examiner
Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627
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