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
RESPONSE TO ELECTION/RESTRICTION
Applicant’s election without traverse of group I, drawn to analgesics cited therein and now elected species recited in claim 1 in the reply filed on 6/25/2026 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Claims 3 and 7-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 1 and 4-6 is contained herein.
Priority
This application claims the benefit of U.S. Provisional Application Serial No.
63/498,526, filed April 27, 2023.
Information Disclosure Statement
The examiner has considered the references cited in the information disclosure statement filed of record.
Claim Objections
Claims 1 and 4-6 are objected to because of the following informality:
In claim 1, “A analgesic” should more appropriately read “An analgesic”. Thus the claim and claims dependent on it are objected to. Correction is required.
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 obviousness-type 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); 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 conflicting 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.
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 1 and 4-6 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-2 of US Patent 11,820,762. Although the conflicting claims are not identical, they are not patentably distinct from each other because there is significant overlap between the two applications.
The claims of patent ‘762 recite compounds and compositions thereof which include chrexanthomycin C (cC) (formula VI). The instant claims recite compositions comprising the latter and the scope of claim 1 in the patent is substantially small that one of ordinary skill would have readily arrived at the claimed composition. It has been held that a prior art disclosed genus of useful compounds is sufficient to render prima facie obvious a species falling within a genus. In re Susi, 440 F.2d 442, 169 USPQ 423, 425 (CCPA 1971), followed by the Federal Circuit in Merck & Co. v. Biocraft Laboratories, 847 F.2d 804, 10 USPQ 2d 1843, 1846 (Fed. Cir. 1989).
The patent also teaches that DMSO may be used as a solvent in varying amounts for the patented compositions (see col. 18, li. 55-60). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Thus the claims are not independent and distinct from each other.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The claimed invention is directed to a product of nature without significantly more. The claim(s) recite(s) a judicial exception. This judicial exception is not integrated into a practical application because the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because its characteristics are not markedly different from the product’s naturally occurring counterpart in its natural state.
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.
Claims 1 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated over CHENG, A., et al., "Selective C9orf 72 G-Quadruplex-Binding Small Molecules Ameliorate Pathological Signatures of ALS/FTD Models," Journal of Medicinal Chemistry, 2022, 65:12825-12837.-mentioned in IDS.
CHENG et al. teach compositions comprising chrexanthomycin C (cC) in DMSO in a concentration of 100uM which is about the recited concentrations recited in claim 4 in the broadest sense (note the specification does not provide a specific range regarding the term about- see page 12829, Figure 5, compound designated as cC). Thus the claims are anticipated.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624
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