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 Claims
1. This application claims benefit of the provisional application: 63537341 09/08/2023.
2. Claims 1-43 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 1-43 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1 and 46 of Burns et al. co-pending application No. 18/827,205, or see Burns et al. US 2025/0092043 A1. Although the conflicting claims are not identical, they are not patentably distinct from each other and reasons are as follows.
Applicant claim a compound/composition of formula (I), i.e.,
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384
540
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, wherein R1 is phenyl or indazolyl, R2 is alkyl, R3
is hydrogen or halo, Rc4 and Rd4 is hydrogen, alkyl or cycloalkyl, or Rc4 and Rd4
together with the N atom to which they are attached form a heterocycloalkyl group,
see claim 1. Dependent claims 2-43 further limit the scope of compounds, i.e.,
specific variablesR1-R3 and Rc4 and Rd4, specific compounds, and methods of use
for treating cancer.
Burns et al. ‘205 claims a compound of formula (I), i.e.,
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272
544
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, wherein R1, R2 and R4 is hydrogen, alkyl or
Cycloalkyl; R3 is aryl or heteroaryl; X1 is -CH2-, L is
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76
124
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, and E is
Heterocycloalky, see claim 1. Burns et al. ‘205 compounds are used for treating
cancer.
The difference between instant claims and Burns et al. ‘205 is that the instant claim is embraced within the scope of Burns et al. ‘205.
One having ordinary skill in the art would find the claims 1-43 prima facie obvious because one would be motivated to employ the compound of Burns et al. ‘205 to obtain instant invention.
The motivation to make the claimed compounds derived from the known compounds of Burns et al. ‘205 would possess similar activity to that which is claimed in the reference.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
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/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1691
August 25, 2026
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