DETAILED ACTION
Claims 63-69 are currently pending in the instant application.
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
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Information Disclosure Statement
Applicant's Information Disclosure Statements filed on 07/29/2024, 10/09/2024, 12/06/2024, 03/10/2025, 05/28/2025, 07/24/2025, 11/14/2025 and 12/12/2025 have been considered. Please refer to Applicant's copies of the 1449 submitted herewith.
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.
Rejection I
Claim 63-69 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 22-23, 35, 38-39, 42-55 of copending Application No. 18/724,771, (hereafter referred to as ‘771) in view of Mulvihill et al (see Life Sciences, 2013, Vol. 92, p. 492-497).
‘771 is drawn to a method of treating or managing pain or providing analgesia in a subject in need thereof, the method comprising administering a compound such as
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as well as other overlapping compounds as the instant application. The instant claims are drawn to a m method of using the same compounds for reversibly inhibiting monoacylglycerol lipase (MAGL).
Mulvihill teaches that MAGL inhibitors elicit antinociceptive effects in mouse models of noxious chemical, inflammatory, thermal and neuropathic pain (see 2nd column, p. 494). Thus it would be obvious to one of ordinary skill in the art to apply the instant compounds which are taught to inhibit MAGL to treat or manage pain given that Mulvhill teaches the inhibition of MAGL to treatment of pain.
This is a provisional nonstatutory double patenting rejection.
Rejection II
Claim 63-69 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 36-37, 49, 37, 55-67 of copending Application No. 18/724,766, (hereafter referred to as ‘766) in view of Mulvihill et al (see Life Sciences, 2013, Vol. 92, p. 492-497).
‘766 is drawn to a method of treating an anxiety disorder in a subject in need thereof, the method comprising administering a compound such as
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as well as other overlapping compounds as the instant application. The instant claims are drawn to a m method of using the same compounds for reversibly inhibiting monoacylglycerol lipase (MAGL).
Mulvihill teaches that MAGL inhibitors show promise in reducing anxiety (see end of 1st column, p. 495). Thus it would be obvious to one of ordinary skill in the art to apply the instant compounds which are taught to inhibit MAGL to treat an anxiety disorder given that Mulvhill teaches the inhibition of MAGL to treatment of pain.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAREN CHENG whose telephone number is (703)756-4699. The examiner can normally be reached M-F, 9AM-6PM PST.
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/KAREN CHENG/Primary Examiner, Art Unit 1623
/ADAM C MILLIGAN/Supervisory Patent Examiner, Art Unit 1623
Prosecution Insights