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 .
Election Acknowledged
Applicant's election with traverse of the invention of Group I encompassing claims 1-3 and the cationic lipid species of
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in the reply filed on 5/8/2026 is acknowledged. The traversal is on the ground(s) that the technical field of Thompson is different from that of the present invention and Thompsons structure requires a methyl group at m3 of present structure which is limited to exclude methyl. Applicant’s arguments are not persuasive as a compound described by the prior art that is the same structure as claimed would have the same properties. Regarding the exclusion of methyl at the m3 position by the present claims, this may overcome Thompson but at the time of restriction, methyl was not excluded and instead a potential substituent. Applicant’s traversal arguments are therefore not found persuasive. The requirement is still deemed proper and is therefore made FINAL.
Applicant’s elected species appears to be free of the prior art and so the Examiner has expanded their search to the following structure for examination on the merits:
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wherein m1 is a hydrogen atom, m2 is a C12 alkyl group, m3 is a heteroatom containing straight-chain alkyl (
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) and m4 is a C15 alkyl group.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 7/31/2024 and 5/7/2026 have been considered by the examiner.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Joo et al. (KR 20140069931; translation provided).
Joo describes pseudo-ceramide compounds for use on the skin via cosmetic compositions. Joo discloses the following compound:
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(see [0074]) which overlaps with the examined compound as described under section 4 above where m1 is a hydrogen atom, m2 is a C12 alkyl group and m4 is a C15 alkyl group. It is noted that instant claims 2 and 3 do not specifically identify
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as a m3 substituent. However, because claims 2 and 3 define m1, m2, m3 and m4 using an ‘or’ conjunction (“m1 is…, m2 is…., m3 is…., and/or m4 is…”), the Examiner understands the claim to require only one of the species of m1, m2, m3 and m4 to be present (which m1, m3 and m4 are). As such, claims 1-3 are anticipated by Joo.
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 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18231831 (reference application).
The present invention claims
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which is identical to the structure claimed in the reference application:
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. The m1-m4 substituents are overlapping in scope, e.g. alkyl (e.g. isopropyl), linear alkyl, substituted amine (e.g. N-dimethyl ethylamine), etc.. The largest difference between the two applications is that the reference application provides several specific structural embodiments which the present application does not. However, these structures are considered obvious as they are generally encompassed by present claims 1-3.
It is noted that the reference application has been allowed but since it has not been issued a patent number this double patenting rejection is being issued as a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE A PURDY whose telephone number is (571)270-3504. The examiner can normally be reached from 9AM to 5PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bethany Barham, can be reached on 571-272-6175. 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).
/KYLE A PURDY/Primary Examiner, Art Unit 1611
Prosecution Insights