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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 11 is rejected under 35 U.S.C. 101 because the claimed invention lacks patentable utility. The use of the phrase “Use of” makes it unclear of which statutory class the claim falls under. The claim language set no statutory class of a method of use or composition of matter.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 11, the phrase "Use of" renders the claim indefinite because it is unclear which statutory class the claim falls onto. If they are meant to be a method, an active step is missing. If they are meant to be a composition of matter, it is unclear if the “use” is a future intended use. The claim refers to a use of the compound without setting the limitation for the intended use of compound Formula (I).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 15-21 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-3 and 9-11 of copending Application No. 18256650 (reference application). Copending ‘650 is of the same invention of compound Formula (I)
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or salt thereof, solvates thereof or solvates of salts thereof to treat a condition selected from the same list of claimed conditions. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 15-21 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 9, 11 and 13 of prior U.S. Patent No. 12595247. U.S ‘247 is of the same invention of compound Formula (I)
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or salt thereof, solvates thereof or solvates of salts thereof to treat a condition selected from the list of the same claimed conditions. This is a statutory double patenting rejection.
Conclusion
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MIKHAIL O'DONNEL. ROBINSON
Examiner
Art Unit 1627
/MIKHAIL O'DONNEL ROBINSON/Examiner, Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627
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