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 .
DETAILED ACTION
Priority and Status of the Claims
1. This application is CON of 17729780 04/26/2022 ABN, which is a CON of 16/864,479 05/01/2020 PAT 11345670, which is a DIV of 15/543,389 07/13/2017 PAT 10654811, which is a 371 of PCT/CA2016/000008 with a filing date 01/13/2016, which claims benefit of 62/102,719 with a filing date 01/13/2015.
2. Claims 38-54 are pending in the application.
Double Patenting
3. 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, 163 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 38-54 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 1 of Andersen et al. US 10,654,811. Although the conflicting claims are not identical, they are not patentably distinct from each other and reasons are as follows.
Applicant claims a compound/composition of formula (I) or it salt, i.e.,
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, wherein X is –O–, -C(OR5)-2-, -C(R8R9)- and R8 or R9 is hydrogen, halogen, alkyl, alkenyl, or aralkyl, R3 is optionally substituted heteroaryl, R1 is hydrogen or hydroxyl, n1 or n3 is 0-5, and R11a, R11b, R11c and R11d are hydrogen, see claim 1. Dependent claims 39-54 further limit the scope of compounds, i.e., specific variable X, R8, R9, R3, n3, R11a, R13, additional therapeutic compounds, methods of use for treating cancer.
Andersen et al. ‘811 claims a compound/composition of formula (IA) or its salt, i.e.,
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, wherein X is -O-, -C(OR5)-2-, or -C(R8R9)-, R3 is
-N3 or heteroaryl, R5-R6 and R8-R8 are hydrogen or halogen, and methods of treating cancer, see columns 203-282.
The difference between instant claims and Andersen et al. ‘811 is that the instant claims are embraced within the scope of Andersen et al. ‘811.
One having ordinary skill in the art would find the claims 38-54 prima facie obvious because one would be motivated to employ the compounds/compositions and methods of use of Andersen et al. ‘811 to obtain instant invention.
The motivation to make the claimed compounds/compositions and methods of use derived from the known compounds/compositions and methods of use of Andersen et al. ‘811 would possess similar activity to that which is claimed in the reference.
Conclusion
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/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1691
July 27, 2026
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