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
Claims 21-37 are currently pending in the instant application. Applicants have canceled claims 1-20 and added new claims 21-37 in an amendment filed on December 13, 2024. Claims 21-37 are rejected in this Office Action.
I. Priority
The instant application is a CON of 17/942,928, filed on September 12, 2022 PAT 12,083,113 which is a CON of 16/703,009, filed on December 4, 2019 PAT 11,439,632 which claims benefit of US Provisional Application 62/775,534, filed on December 5, 2018.
II. Information Disclosure Statement
The information disclosure statements (IDS) submitted on June 26, 2025, January 22, 2026 and June 26, 2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
III. Rejections
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 obviousness-type 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); 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) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
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 21-37 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,439,632. Although the conflicting claims are not identical, they are not patentably distinct from each other because:
Applicants claim
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773
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Determining the Scope and Content of the Issued Patent
Claim 1 of the issued patent claims
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276
375
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Ascertaining the Differences Between the Instant Application and the Issued Patent
The difference between the instant application and the issued patent is the instant application’s claims are drawn to a method of treating melanoma whereas the issued patent’s claims are drawn to a method for treating melanoma characterized by elevated expression levels of PD-L1.
Finding Prima Facie Obviousness
The genus method of the instant application encompasses the narrower method of the patented claims 1-10. The scope of the compounds in the patented claims 1-10 and the scope of the claims 21-37 of the instant application overlap and include patented subject matter in the instant claims. Therefore, one of ordinary skill in the art would be motivated to use the compounds for treating melanoma in the issued patent again in the instant application since the scope already patented falls within the full scope of the instant claims 21-37. As a result, the claims are rejected under obviousness-type double patenting.
Claims 21-37 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12083113. Although the conflicting claims are not identical, they are not patentably distinct from each other because:
Applicants claim
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623
773
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Determining the Scope and Content of the Issued Patent
Claims 1 and 13 of the issued patent claim
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133
306
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348
319
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449
328
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Ascertaining the Differences Between the Instant Application and the Issued Patent
The difference between the instant application and the issued patent is the instant application’s claims are drawn to a method of treating melanoma whereas the issued patent’s claims are drawn to a method for administering immunotherapy wherein the subject has a disease or disorder characterized by elevated expression levels of PD-L1 or a method of treating melanoma characterized by elevated expression levels of PD-L1.
Finding Prima Facie Obviousness
The genus method of the instant application overlaps with the method of the patented claims 1-24 and include patented subject matter in the instant claims. Therefore, one of ordinary skill in the art would be motivated to use the compounds for treating melanoma in the issued patent again in the instant application since the scope already patented falls within the full scope of the instant claims 21-37. As a result, the claims are rejected under obviousness-type double patenting.
IV. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shawquia Jackson whose telephone number is 571-272-9043. The examiner can normally be reached on 7:00 AM-3:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Adam Milligan can be reached on 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/SHAWQUIA JACKSON/Primary Examiner, Art Unit 1626
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