Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Status
Claims 1-18 are pending.
Priority
This application is a CON of 17/454,300 filed 11/10/2021 (now abandoned);
17454300 is a CON of 16/654,305 filed 10/16/2019 (now US Patent No. 11,193,932);
16/654,305 is a CON of 15/890,646 filed 2/7/2018 (now US Patent No. 10,473,658);
15/890,646 is a DIV of 14/215,930 filed 3/17/2014 (now US Patent No. 9,897,604); and
14/215,930 claims benefit to PRO 61/798,562 filed 3/15/2013.
Note(s): The earliest effective filing date is 3/15/2013 as the pending invention is fully supported in provisional application 61/798,562.
Claim Interpretation
Independent claim 1 is directed to fluorescent compound encompassed by Formula I-A,
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190
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, wherein the variables are as explained therein.
Information Disclosure Statement
The two information disclosure statements filed 7/17/2024 were considered.
Double Patenting Rejections
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9, 12, and 19-25 of U.S. Patent No. 9,897,604. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to compounds encompassed by Applicant’s Formula I-A (see patented claims 9, 12, and 19-25). Thus, the skilled artisan would recognize that the inventions disclose overlapping subject matter.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 10, and 12 of U.S. Patent No. 11,193,932. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to compounds encompassed by Applicant’s Formula I-A (see patented claims 1-5, 10, and 12). Thus, the skilled artisan would recognize that the inventions disclose overlapping subject matter.
Comments/Notes
It should be noted that no prior art is cited against the pending invention. The claims are distinguished over the prior art of record because the prior art neither anticipates nor renders obvious compounds of Formula I-A as set forth herein. The closest art is Applicant’s own work which is cited in the double patenting rejections above.
Conclusion
Claims 1-18 are rejected.
Future Correspondences
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D L Jones whose telephone number is (571)272-0617. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G. Hartley can be reached at (571)272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D. L. Jones/
Primary Patent Examiner
Art Unit 1618
July 18, 2026
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