DETAILED ACTION
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
Claims 1-20 are pending.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,035,772. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are drawn to compounds of the formula I
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and US ‘772 claims a compound
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The compound of US ‘772 falls within the scope of the compound of formula I according to the instant claims.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 10,111,432. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘432 claims a composition comprising
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The compounds of US ‘432 fall within the scope of the compound of formula I according to the instant claims (depicted above).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,182,568. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘568 claims a composition for the control of a fungal pathogen including mixtures of at least one of the compounds of Formula I
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The compounds of US ‘568 fall within the scope of the compound of formula I according to the instant claims (depicted above).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,358,423. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘423 claims a process for the preparation of the compound of Formula A
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The compounds of US ‘423 fall within the scope of the compound of formula I according to the instant claims (depicted above).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 10,588,318. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘318 claim a compound of Formula I
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The compounds of US ‘318 fall within the scope of the compound of formula I according to the instant claims (depicted above).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,595,531. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘531 claims a composition for the control of a fungal pathogen including mixtures of at least one of the compounds of Formula I
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The compounds of US ‘531 fall within the scope of the compound of formula I according to the instant claims (depicted above).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,206,828. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘828 claims a synergistic fungicidal mixture comprising the compound of Formula I
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The compound of Formula I according to US ‘828 falls within the scope of the compound of formula I according to the instant claims (depicted above).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 11,284,620. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘620 claims a compound of Formula I
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The compound of Formula I according to US ‘620 falls within the scope of the compound of formula I according to the instant claims (depicted above).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,751,568. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘568 claims the compound
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The compound according to US ‘568 falls within the scope of the compound of formula I according to the instant claims (depicted above).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,114,660. Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘660 claims a composition comprising a compound of the formula:
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The compound according to US ‘660 falls within the scope of the compound of formula I according to the instant claims (depicted above).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nathan W Schlientz whose telephone number is (571)272-9924. The examiner can normally be reached 10:00 AM to 6:00 PM, Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571) 272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/N.W.S/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616
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