DETAILED ACTION
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 .
Priority
2. The instant application claims is a national stage entry of PCT/EP2022/074866, filed September 7, 2022.
3. Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d) by application no. EP21195853.3 filed in the European Patent Office on September 9, 2021, which papers have been placed of record in the file.
Information Disclosure Statement
4. The information disclosure statements (IDS) submitted on March 7, 2024 and May 11, 2026 were in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The IDS documents were considered. A signed copy of each form 1449 is enclosed herewith.
Election/Restrictions
5. Applicant’s election without traverse of Group I in the reply filed on May 8, 2026 is acknowledged.
6. In accordance with the MPEP 803.02, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended (see MPEP 803.02). If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
7. As per MPEP 803.02, the Examiner will determine whether the entire scope of the claims is patentable. Applicants' elected species
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174
260
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makes a contribution over the prior art of record. Therefore, according to MPEP 803.02: should the elected species appear allowable, the search of the Markush-type claim will be extended. The Markush-type claim shall be rejected and claims to the nonelected invention held withdrawn from further consideration. It has been determined that the entire scope claimed is not patentable.
Status of Claims
8. Claims 1-15 are pending in the instant application. Claim 11-12 and 14-15 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a non-elected invention and species. Therefore, claims 1-10 and 13 read on an elected invention and species and are therefore under consideration in the instant application.
Claim Objections
9. Claim 10 is objected to for depending on a rejected base claim.
Claim Rejections - 35 USC § 102
10. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
11. 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
12. Claim 1-6, 9, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2018/087036.
WO 2018/087036 teaches anticipatory compounds and compositions. See Table 1 staring at page 190, for example the following compounds:
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311
689
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325
705
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322
666
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327
698
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321
706
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320
698
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327
683
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358
689
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343
667
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334
704
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327
703
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Wherein A is
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93
68
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91
79
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79
83
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, R1 is H, R4, R5, and R6 are H or halogen,Q is phenyl substituted with 1-3 halogen atoms, R3 is H, R2 is 5-10 membered heterocycloalkyl, such as morpholine, thiomorpholine, pyrrolidine, tetrahydrofuran-3-yl, or R2 is 5 membered heteroaryl, such as pyrazole, thienyl.
Double Patenting
13. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
14. Claims 1-9 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 14-18 of U.S. Patent No. 12,559,481. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-12 and 14-18 of U.S. Patent No. 12,559,481 anticipate and are fully encompassed by the instant claims.
15. Claims 1-9 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 13-16 of U.S. Patent No. 11,572,357. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-11 and 13-16 of U.S. Patent No. 11,572,357 anticipate and are fully encompassed by the instant claims.
16. Claims 1-9 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 9-11 of U.S. Patent No. 10,889,573. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-6 and 9-11 of U.S. Patent No. 10,889,573 anticipate and are fully encompassed by the instant claims. For example, compound 14 and 133 in ‘573 anticipate the presently claimed compounds.
17. Claims 1-9 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 10-11 of U.S. Patent No. 11,505,545. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-6 and 10-11 of U.S. Patent No. 11,505,545 anticipate and are fully encompassed by the instant claims. For example, compound 14 and 133 in ‘573 anticipate the presently claimed compounds.
18. Claims 1-9 and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 14-18 of copending U.S. Patent Application No. 17/995,750. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-12 and 14-18 of U.S. Patent No. 12,559,481 anticipate and are fully encompassed by the instant claims.
Claim 1-10 and 13 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 11-13 of copending Application No.17/995,750 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-8 and 11-13 of copending Application No.17/995,750 anticipate and are fully encompassed by the instant claims. For example, Example 10 on page 110 of the specification of ‘750 anticipates the presently claimed compounds.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
19. No claims are allowed.
20. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Samantha Shterengarts whose telephone number is (571)270-5316. The examiner can normally be reached on Monday thru Thursday 9-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Adam Milligan can be reached on 571-270-7674. 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.
/SAMANTHA L SHTERENGARTS/Primary Examiner, Art Unit 1623
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