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 .
This is the first action on the merits.
Election/Restrictions
Applicant's election with traverse of Group (I) in the reply filed on July 23, 2026 is acknowledged. Group (I), drawn to compounds of formula (1), substituted thiazolidinediones and compositions thereof, embraced by claims 1-6 was elected by Applicant.
The traversal is on the ground(s) that 1) the Examiner is mistaken in holding that the Group I and Group II claims are directed to separate inventions only because the claims do not fall within paragraph (b) of 37 C.F. R. § 1.475; 2) If the compounds of the Group I claims are patentable, it logically follows that any composition containing the patentable Group I compounds must also be both novel and unobvious, and therefore also patentable; and 3) there would be an undue burden in allowing two separate patents to issue on the same allowable subject matter, and with the protections afforded by 35 U.S.C.§ 121 prohibiting a double-patenting rejection, the two patents can be separately owned and subject the public to multiple patent suits by different patentees for the same inventive concepts.
This is not persuasive. The Examiner concluded the inventions lacked a shared special technical feature over the art, see the art rejection herein, which is all that is required to break unity of invention. With regards to point 2, indeed, when the product claims are free of the art and allowable, Group (II) may be rejoined, if commensurate in scope with claim 1. Currently, the claims are not commensurate in scope. Lastly, the 35 U.S.C.§ 121 safety harbor would apply for a divisional application when commensurate in scope with the lack of unity, and therefore, a double patenting rejection would not be applicable.
Applicant has not pointed to any errors in the Examiner’s analysis of the classification of the different inventions. The requirement is still deemed proper and is therefore made FINAL.
Applicant elected the following species, formula 11 in Example 11:
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204
480
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376
645
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. Claims 1 and 3-6 read on the elected species.
The elected species was not found during the search. Thus, the search was expanded to a group wherein X1 is carbon and Ar1 is
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73
141
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.
Claims 1-10 are pending and claims 1 and 3-6 are under examination. Claims 2 and 7-10 are withdrawn based on the species election and the lack of unity.
Claim Objections
Claims 4 and 6 are objected to as being dependent upon a rejected base claim.
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 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.
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.
Claim(s) 1, 3 and 5 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Clary et al. (US 7968560).
The reference teaches the following species:
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44
816
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140
472
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647
826
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68
384
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, see column 6, compounds 3 and 4.
The R3 variables is defined as alkyl, and the broadest reasonable interpretation of alkyl is substituted and unsubstitued alkyl.
Thus, said claims are anticipated.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUSANNA MOORE whose telephone number is (571)272-9046. The examiner can normally be reached Monday - Friday, 10:00 am to 7:00 pm.
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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.
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/SUSANNA MOORE/Primary Examiner, Art Unit 1624
