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 .
Claims 21-29 and 31-41 are pending in the instant application. Claims 35-40 are rejected. Claims 21-29, 31-34 and 41 are allowed.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 15, 2025 has been entered.
Response to Amendment and Arguments/Remarks
Applicant’s amendment and arguments/remarks filed on September 15, 2025 have been fully considered and entered into the application. With regards to the nonstatutory double patenting rejections as being unpatentable over U.S. Patent Nos. 10,870,628, 10,577,331, 9,944,609, 9,187,433, 8,962,836, 11,345,668, and 12,049,453, Applicant argues that “there is no doubt the rejections presented in the Office Action fail both of the requirements of MPEP §804(II)(B)(3). Unless and until proper factual findings are made regarding each of the differences between the examined claims and the claims of the prior patents and a proper articulated reasoning is presented for each of those differences, the rejections remain improper on their face and no prima facie case of obviousness has been established.” Upon further consideration, this argument is found to be partially persuasive (i.e., the rejections over claims 21-29 and 31-34 have been withdrawn because the references fail to claim 1. mixing a cyclic amino compound according to the formula disclosed in the claims with a first organic solvent to form a first mixture and 2. combining the reaction mixture with a second solvent to quench the reaction).
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 §§ 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.
Claims 35-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-20 of U.S. Patent No. 10,870,628. Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons given below.
U.S. Patent No. 10,870,628 claims a very similar method for the synthesis of a diketopiperazine according to the same Formula II to the method for the synthesis of a diketopiperazine according to Formula II of the instant claims. The only difference in the syntheses is the instant method involves mixing a cyclic amino compound with a first organic solvent to form a first mixture. However, this would have been obvious to one of ordinary skill in the art at the time of the invention through routine experimentation and one of ordinary skill in the art would arrive at the method of the instant claims in view of the reference with a reasonable expectation of success. The motivation would have been to find the optimal reaction conditions for the synthesis. Thus, a prima facie case of obviousness has been established.
Claims 35-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-17 of U.S. Patent No. 10,577,331. Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons given below.
U.S. Patent No. 10,577,331 claims a similar method for the synthesis of a diketopiperazine to the method for the synthesis of a diketopiperazine according to Formula II of the instant claims. Since a cyclic amino compound wherein R is a C4 N-protected alkyl amine is used in the reaction (i.e., see claim 11), the resulting diketopiperazine would have the same Formula II as the product of the instant claims. The only differences in the syntheses are the instant method involves mixing a cyclic amino compound with a first organic solvent to form a first mixture and a specific temperature to which the mixture is heated is not claimed in the reference. However, these reaction conditions would have been obvious to one of ordinary skill in the art at the time of the invention through routine experimentation and one of ordinary skill in the art would arrive at the method of the instant claims in view of the reference with a reasonable expectation of success. The motivation would have been to find the optimal reaction conditions for the synthesis. Thus, a prima facie case of obviousness has been established.
Claims 35-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-20 of U.S. Patent No. 9,944,609. Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons given below.
U.S. Patent No. 9,944,609 claims a similar method for the synthesis of a diketopiperazine to the method for the synthesis of a diketopiperazine according to Formula II of the instant claims. Since a cyclic amino compound wherein R is a C4 N-protected alkyl amine is used in the reaction (i.e., see claim 13), the resulting diketopiperazine would have the same Formula II as the product of the instant claims. The only differences in the syntheses are the instant method involves mixing a cyclic amino compound with a first organic solvent to form a first mixture and a specific temperature and amount of time which the mixture is heated is not claimed in the reference. However, these reaction conditions would have been obvious to one of ordinary skill in the art at the time of the invention through routine experimentation and one of ordinary skill in the art would arrive at the method of the instant claims in view of the reference with a reasonable expectation of success. The motivation would have been to find the optimal reaction conditions for the synthesis. Thus, a prima facie case of obviousness has been established.
Claims 35-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-20 of U.S. Patent No. 11,345,668. Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons given below.
U.S. Patent No. 11,345,668 claims a very similar method for the synthesis of a diketopiperazine according to the same Formula II to the method for the synthesis of a diketopiperazine according to Formula II of the instant claims. The only difference in the syntheses is the instant method involves mixing a cyclic amino compound with a first organic solvent to form a first mixture. However, this would have been obvious to one of ordinary skill in the art at the time of the invention through routine experimentation and one of ordinary skill in the art would arrive at the method of the instant claims in view of the reference with a reasonable expectation of success. The motivation would have been to find the optimal reaction conditions for the synthesis. Thus, a prima facie case of obviousness has been established.
Claims 35-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-20 of U.S. Patent No. 12,049,453. Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons given below.
U.S. Patent No. 12,049,453 claims a very similar method for the synthesis of a diketopiperazine according to the same Formula II to the method for the synthesis of a diketopiperazine according to Formula II of the instant claims. The only difference in the syntheses is the method of the reference involves dropwise combining the mixture of a cyclic amino compound with a first organic solvent with the catalyst in an organic solvent. However, this would have been obvious to one of ordinary skill in the art at the time of the invention through routine experimentation and one of ordinary skill in the art would arrive at the method of the instant claims in view of the reference with a reasonable expectation of success. The motivation would have been to find the optimal reaction conditions for the synthesis. Thus, a prima facie case of obviousness has been established.
Allowable Subject Matter
Claims 21-29, 31-34 and 41 are allowed.
Conclusion
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/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622