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 .
Status of the Claims
Per Applicant’s amendment to the claims, submitted on 07/29/2024, claims 1-21 are canceled, and claims 21-38 are newly added. Currently, claims 21-38 are pending in the instant application.
Priority
The instant application is a CON of application 17/540,646, filed on 12/02/2021, and claims priority to provisional application 63/123,721, filed on 12/10/2020. Parent application 17/540,646 has been issued as US patent No. 12076318.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/22/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 21-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12076318 (herein the ‘318 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application and the claims of the ‘318 patent are significantly overlapping in scope.
Claim 1 of the instant application recites a method of reversing hibernating myocardium, the method comprising providing to a subject with hibernating myocardium a compound represented by formula (X):
PNG
media_image1.png
172
378
media_image1.png
Greyscale
Claim 30 of the instant application recites a method of reversing hibernating myocardium, the method comprising providing to a subject with hibernating myocardium a compound represented by formula (IX):
PNG
media_image2.png
166
386
media_image2.png
Greyscale
Claim 1 of the ‘318 patent recites a method of reversing hibernating myocardium in a subject with heart failure, the method comprising providing to a subject with hibernating myocardium a compound represented by formula (X):
PNG
media_image3.png
159
385
media_image3.png
Greyscale
Claim 10 of the ‘318 patent recites a method of reversing hibernating myocardium in a subject with heart failure, the method comprising providing to a subject with hibernating myocardium a compound represented by formula (IX):
PNG
media_image4.png
126
298
media_image4.png
Greyscale
As can be seen above, each of the instant application and the ‘318 patent each recite two independent claims for methods treating hibernating myocardium by administration of formula (X) or formula (IX). The main differentiating factor between the claims of the instant application and the ‘318 patent is that the claims of the ‘318 patent are drawn to administration of the target compounds to a subject having heart failure. Otherwise, the methods of the application and the patent are directed towards treating the same condition of hibernating myocardium by administering the same compounds. Furthermore, dependent claims 22-29 and 31-38 of the instant application appear to apply largely the same limitations to their parent claims as claims 2-9 and 11-18 of the ‘318 patent. Additionally, the claims of the ‘318 patent are encompassed by the claims of the instant application. Given that the instant application and the ‘318 patent are drawn to such similar subject matter and overlapping scope, they cannot be considered as patentably distinct from one another.
Conclusion
Claims 21-38 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC TRAN whose telephone number is (571)272-7854. The examiner can normally be reached Mon-Fri 8:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey S Lundgren can be reached at (571) 272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIC TRAN/Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
Prosecution Insights