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
1. Claims 1, 3, 5-7, 10-11, 13, 15, 17, 19, 22, 25, 29, 33, 36, 42-44, 47 are pending in the current application.
2. This application is a 371 of PCT/CN2022/128293 10/28/2022. FOREIGN APPLICATIONS: PCTCN2021127023 10/28/2021 and PCTCN2022112270 08/12/2022.
Comments on Miscellaneous Documents
3. Applicants have cited US application numbers under and NPL heading in the IDS of July 18, 2024. If applications are published then they are appropriately cited as publications under the US document heading with publication date. For a list of kind codes see “http://www.uspto.gov/patents/ebc/kindcodesum.jsp”. As explained in MPEP 609.04(a) II (C) “For each cited pending unpublished U.S. application, the application specification including the claims, and any drawings of the application, or that portion of the application which caused it to be listed including any claims directed to that portion, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system. The requirement in 37 CFR 1.98(a)(2)(iii) for a legible copy of the specification, including the claims, and drawings of each cited pending U.S. patent application (or portion of the application which caused it to be listed) is sua sponte waived where the cited pending application is stored in the USPTO’s IFW system. See Waiver of the Copy Requirement in 37 CFR 1.98 for Cited Pending U.S. Patent Applications, 1287 OG 163 (October 19, 2004);”. However as discussed further, “This waiver is limited to the specification, including the claims, and drawings in the U.S. application (or portion of the application). If material other than the specification, including the claims, and drawings in the file of a U.S. patent application is being cited in an IDS, the IDS must contain a legible copy of such material. See 37 CFR 1.98(a)(l)(rv).” There is no mention of the specification, including the claims, and drawings and citing the application under NPL is inappropriate.
Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
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 claims at issue 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 reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
4. Claims 1, 3, 5-7, 10-11, 13, 15, 17, 19, 22, 25, 29, 33, 36, 42-44, 47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,731,987 (cited on the IDS). Although the claims at issue are not identical, they are not patentably distinct from each other because the compounds are the same. The ‘987 patent claims are a little narrower on R1 and L, but all the individual compounds are in the instant claims. The subgenus of claim 33 covers the R1 embodiments of patent claim 1. It is only the word stereoisomer that prevents the species claim 47 from being a statutory rejection over claim 10. Claim 42 has all the species of patent claim 8 and 24 and some additional ones.
5. Claims 1, 3, 5-7, 10-11, 13, 15, 17, 19, 22, 25, 29, 33, 36, 42-44, 47 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12,071,443 (cited on the IDS). Although the claims at issue are not identical, they are not patentably distinct from each other because the compounds are the same. The ‘443 patent claims are drawn to the method of claim 44 and a little narrower on R1 and L, but all the individual compounds are in the instant claims. The subgenus of claim 33 covers the R1 embodiments of patent claim 1. The species claim 47 is in claim 11 and 12. Claim 42 has all the species of patent claim 8 and some additional ones. The method could not be practiced without the instantly claimed compounds.
Conclusion
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID K O'DELL whose telephone number is (571)272-9071. The examiner can normally be reached on Monday - Friday 9:30 - 7:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached on 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID K O'DELL/Primary Examiner, Art Unit 1621
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