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
This is a response to Applicant’s communication filed on December 23, 2025. Application No. 18/649,184, filed April 29, 2024, is a Divisional of U.S. Nonprovisional application No. 16/344,195, filed April 23, 2019, (issued U.S. Patent No. 11,970,486), which is a 371 of PCT/US2017/058144, filed October 24, 2017, and claims the benefit of U.S. Provisional applications Nos: 62/534,990, filed July 20, 2017; 62/443,040, filed January 6, 2017; and 62/412,119, filed October 24, 2016. In an amendment filed July 15, 2024, Applicant cancelled claims 1-159. In an amendment filed December 23, 2025, Applicant added new claims 166-176. Claims 160-176 are pending.
Species Election
Applicant's election with traverse of the compounds species of claim 176 in the reply filed on December 23, 2025, is acknowledged. The traversal is on the grounds that there would not be a substantial burden on the Office examine the full scope of the claimed invention. This is not found persuasive because there is a substantial burden. The claims are drawn to methods of using thousands of known compounds having separate and distinct classifications, in separate and distinct fields of art thereby requiring substantially different fields of search.
The requirement is still deemed proper and is therefore made FINAL.
Claims 160-176 are examined below.
Claim Objections
Claim 164 is objected to under 37 CFR 1.75(c) as being in improper form because it is a multiple dependent claim. See MPEP § 608.01(n).
Claim Rejections - 35 USC § 102(a)(1)
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 160, 166-170, and 173-175 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakagami et al., U.S. Patent No. 8,889,674. The CAS abstract for Sakagami discloses the following compound used for the treatment of neurological disorders (as claimed by the present invention):
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(Sakagami et al., citing the CAS Abstract for the compound depicted above; see the CAS Abstract for the method of treating neurological disorders.) This compound reads on a compound of Formula Ia, wherein Formula Ia B is Formula Ib; L2 is -C(O)-; m and n are 0; R1 is an optionally substituted aryl; Het is -C(O)NH-; and R5 is a heteroaryl.
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 160-176 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-8 of U.S. Patent No. 11,873,298. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘298 patent encompass the same subject matter claimed by the present invention. Claims 3-8 of the ‘298 patent are drawn to methods of alleviating symptoms associated with a neurological disorder as well as a alleviating the symptoms associated with a stearoyl-CoA desaturase (SCD) associated disorder, like the claims of the present invention. Moreover, the method claims of the ‘298 patent are drawn to using the compounds of claim 1 of the ‘298 patent. At least the following compound of claim 1 of the ‘298 patent reads on a compound used in the methods of the presently claimed invention:
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Claims 160-176 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-16 of U.S. Patent No. 12,275,723. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘723 patent encompass the same subject matter claimed by the present invention. Claims 11-16 of the ‘723 patent are drawn to methods of alleviating symptoms associated with a neurological disorder as well as a alleviating the symptoms associated with a stearoyl-CoA desaturase (SCD) associated disorder, like the method claims of the present invention. Moreover, the method claims of the ‘723 patent are drawn to using the compounds of claim 1 of the ‘723 patent. At least the following compound of claim 1 of the ‘723 patent reads on a compound used in the methods of the presently claimed invention:
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Claims 160-176 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,433,880. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘880 patent encompass the same subject matter claimed by the present invention. Claims 1-23 of the ‘880 patent are drawn to methods of treating a neurological disorder as well as suppressing toxicity in a cell by administering a SCD inhibitor, like the methods of use claimed by the present invention. At least the following SCD inhibitor used in the methods of the ‘880 patent reads on a compound used in the methods of the present invention:
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. See ‘880 patent, claim 23.
Conclusion
No claims are allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY R ROZOF whose telephone number is (571)270-5992. The examiner can normally be reached on Monday - Friday, 9:00 a.m. -5:00 p.m..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached on (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TIMOTHY R ROZOF/
Primary Examiner, Art Unit 1625