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 . Claims 1-10 and 20-29 are pending in this application.
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-10 and 20) in the reply filed on 05/26/2026 is acknowledged.
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 1-10 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9-10, 12, 14-22 and 24-26 of copending Application No. 17/904,388. Although the claims at issue are not identical, they are not patentably distinct from each other because there is overlap between the instant claims and claims 1-7, 9-10, 12, 14-22 and 24-26 of copending Application No. 17/904,388.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-7, 17, 22-26 and 28 of copending Application No. 17/904,393. Although the claims at issue are not identical, they are not patentably distinct from each other because there is overlap between the instant claims and claims 1, 5-7, 17, 22-26 and 28 of copending Application No. 17/904,393.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
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.
Claims 1-10 and 20 are 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:
a. Claim 1 and claims dependent thereon are rejected because the term “derivatives” is indefinite. What is covered and what is not? Note that a derivative of a compound is a new chemical substance formed by modifying one or more atoms or functional groups of parent compound resulting in distinct physical and chemical properties. It is recommended that applicants delete said term.
b. Regarding claim 1, the term "including" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
c. Claim 3 is rejected because there is no period at the end of the claim. If the end of the claim is at the end of compound (Ar-XV1), then applicants have to insert a period after said compound.
d. Regarding claim 8, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
e. Claim 8 is rejected because the phrase “.2HCl” is a typographical error. It has a period in front of the number 2. It should read as “2HCl”.
f. In claim 9, the phrase “A compound according to claim 1, wherein the compound of Formula (I) reacts in vivo in the mammalian body to release an agent of Formula (III)” is not clear. Is this a compound claim or a process claim? The claim starts as a compound claim but ends up as a process or method claim. If applicants intend a process claim, then the claim has to be written as a process claim. If applicants intend a compound claim, then applicants have to claim compound of Formula (III).
Claim Objections
Claim 2 is objected to because of the following informalities: In claim 2 the phrase “general Formulae Ar-I to Ar-VI” is objected to because said Formulae is not specific. A formula should be specific and not “general”. Applicants have to delete “general” to overcome this issue. Note that “general” was not used in describing compound Formulae in claims 1, 3, 5 and 9.
Appropriate correction is required.
Information Disclosure Statement
Applicant’s Information Disclosure Statement, filed on 02/13/2024 has been acknowledged. Please refer to Applicant’s copies of the 1449 submitted herewith.
Note that the examiner recommended previously an amendment that would expedite the prosecution of the case (see below).
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Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kahsay Habte Ph.D. whose telephone number is (571)272-0667. The examiner can normally be reached on 8:30 - 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY MURRAY can be reached on 571-272-9023. 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 https://ppair-my.uspto.gov/pair/PrivatePair. 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.
/Kahsay Habte/
Primary Examiner, Art Unit 1624
June 15, 2026
Prosecution Insights