DETAILED ACTION
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 .
Priority
The instant application is a 35 USC 371 National Stage entry of international application PCT/EP2023/010236, which claims priority under 35 USC 119(a)-(d) from EP22173211.8 and EP22175324.7, filed May 13, 2022 and May 25, 2022, respectively.
Information Disclosure Statement
The information disclosure statement dated September 30, 2025 was in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the IDS document was considered and signed copies of the 1449 forms are attached.
Status of Claims
Currently, claims 1-10, 13, 17 and 19-20 are pending in the instant application and under consideration herein.
Claim Objections
Currently, claims 4, 8 and 10 are objected to for depending on a rejected base claim but appear allowable if rewritten in independent form.
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 claims at issue 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 reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3, 5-7, 9, 13, 17 and 19-20, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-10, 13-14, 16, 21-23, 26, 29 and 32 of US Patent Application 18/865,274. Note that the rejection is provisional in nature because the copending claims have not, in fact, been patented.
Although the claims at issue are not identical, they are not patentably distinct from each other because, the claims of the conflicting application is drawn to combinations of the compound
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with an orthosteric EGFR inhibitor, where specific anticipatory compounds are recited in conflicting claim 10 of the application. For example, a combination comprising the compound
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anticipates the instant claims to the compound itself and is identical to the first compound listed in instant claim 10. Further, copending claims 21+ recite a method for treating cancer comprising the same. Accordingly, since the copending claims overlap with and the instant claims, with anticipatory compounds taught in support of the claimed genus, a double patenting rejection is appropriate.
Conclusion
No claims are allowed in this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alicia L. Otton whose telephone number is (571)270-7683. The examiner can normally be reached Monday - Thursday 8:00 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA L OTTON/Primary Examiner, Art Unit 1699
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