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 the Claims
1. This application is a CON of 17403312 08/16/2021 PAT 11981670, which is a DIV of 16/806,733 03/02/2020 PAT 11124510, which is a DIV of 16/107,605 08/21/2018 PAT 10618896, and claims benefit of the provisional application: 62/548,848 with a filing date 08/22/2017.
2. Amendment of claims 42 and 58, cancelation of claims 1-41, 43-57 and 59, and addition of claims 60-91 in the amendment filed on 8/11/2026 is acknowledged. Claims 42, 58 and 60-91 are pending in the application. No new matter has been found. Since the newly added claims 60-91 are commensurate within the scope of invention, claims 42, 58 and 60-91 are prosecuted in the case.
Responses to Amendments/Arguments
3. Since claims 1, 19, 35, 40, 46, 54, 56 and 59 have been canceled, therefore the rejection of claims under the obviousness-type double patenting over Coffman et al. ‘896, ‘591, ‘510 and ‘670 has been obviated herein.
Double Patenting
4. The no statutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) 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 Orne, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and in re Torrington, 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 no statutory 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).
Claims 42 and 58 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable independently over claims 1 and 15 of Coffman et al. US 10,618,896, and over claims 1 and 27 of Coffman et al. US 11,981,670 respectively. Although the conflicting claims are not identical, they are not patentably distinct from each other, and reasons are as follows.
Applicants claim a method of treating or preventing an infectious disease in a mammalian subject in need thereof, comprising administering to the mammalian subject a pharmaceutical composition comprising a pharmaceutically acceptable excipient, an antigen, and a compound of formula (J):
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48
159
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250
580
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, see claim 42.
Applicants claim a method of treating or preventing an infectious disease in a mammalian subject in need thereof, comprising administering to the mammalian subject a pharmaceutical composition comprising a pharmaceutically acceptable excipient, an antigen, and a compound of formula (K):
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256
614
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, see claim 58
Coffman et al. ‘896 a compound/composition of the formula, i.e.,
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250
580
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, and an antigen, see claim 1 and 15 in columns 95-102.
Coffman et al. ‘896 a compound/composition is used for treating infection disease, see column 6.
Coffman et al. ‘670 claims a method of stimulating an immune response in a mammalian subject in need thereof, comprising administering to the mammalian subject a pharmaceutical composition in an amount sufficient to stimulate the immune response in the mammalian subject, the pharmaceutical composition comprising (1) a compound of formula (J), or a salt thereof, and (ii) a pharmaceutically acceptable excipient, and an antigen, wherein the compound of formula (J) has the following structure,
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253
498
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, see claims 1 and 27 in columns 96-110.
Coffman et al. ‘670 compositions are used for treating infection disease, see column 67.
The difference between the instant claims and Coffman et al. ‘896 and ‘670 is that the instant claims are species of Coffman et al. ‘896 and ‘670.
One having ordinary skill in the art would find the claims 42 and 58 prima facie obvious because one would be motivated to employ the compounds/ cmpositions and methods of use of Coffman et al. ‘896 and ‘670 to obtain instant invention.
The motivation to make the claimed methods of use derives from known compounds/compositions and methods of Coffman et al. ‘896 and ‘670 would possess similar activity to that which is claimed in the reference.
Claim Objections
Claims 60-91 are objected to as being dependent on rejected claims 42 and 58.
Conclusion
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/REI TSANG SHIAO/
Rei-Tsang Shiao, Ph.D.
Primary Examiner, Art Unit 1691
August 25, 2026
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