DETAILED ACTION
Claims 1-8, 10-13 are pending in the instant application.
Applicant's election without traverse of group (II), claims 1-7, 10-11, drawn to a compound of formula (I), where in m is 1 in the reply filed on 07/16/2026 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-7, 10-11 in part wherein m is 1 are examined. Claims
8, 12-13 and the remaining subject matter of claims 1-7, 10-11 are withdrawn per 37 CFR 1.142(b).
2. Claim Rejections - Obvious 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. See 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, 168 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130 (b).
Effective January 1,1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-7, 10-11 are rejected under the judicially created doctrine obviousness-type double patenting as being unpatentable over the claims 1-25 of US 12,540,134. Although the conflicting claims are not identical, they are not patentably distinct from each other because the current invention embraces the invention claimed in the above patent.
Determination of the scope and content of the prior art (MPEP §2141.01)
‘540 claims analogues chemical compounds in claims 1-25 as the instant claims 1-7, 10-11.
Ascertainment of the difference between the prior art and the claims (MPEP §2141.02)
The difference between the instant claims 1-7, 10-11 and the claims 1-25 of ‘540 patent is the claims are not word for word identical but the scope of the two sets of claims overlaps significantly with each other.
Finding of prima facia obviousness-rational and motivation (MPEP §2142.2143)
All the elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
3. Claim Rejections - 35 USC § 102
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.
(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.
Claims 1-7, 10-11 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Delbeck et al., WO 2021089683. Delbeck et al. discloses the instant claimed compound, which from the STN search is
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384
760
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176
502
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, which anticipates the instant compounds. Therefore, the instant claims are anticipated by Delbeck et al.
4. Claims 1-7, 10-11 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Delbeck et al., WO 2022008426. Delbeck et al. discloses the instant claimed compound, which from the STN search is
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540
752
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, which anticipates the instant compounds. Therefore, the instant claims are anticipated by Delbeck et al.
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Niloofar Rahmani whose telephone number is
571-272-4329. The examiner can normally be reached on Monday through Friday from 8:30 am to 5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor, can be reached on 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 703-872-9306.
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).
/NILOOFAR RAHMANI/
08/02/2026
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