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 .
Claims 1-14 and 33-38 are pending in this application.
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.
Claims 1-14 and 33-38 are 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. The following reasons apply:
Claim 1 and claims dependent thereon are vague and indefinite in that it is not known what is meant by the definition of RI, RJ, RK, RL, RM, RN, RO, RP, RQ, RR, RS, RT, RU, RV, and RW which is not stated in the form of a proper Markush grouping.
Regarding claim1, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 1 and claims dependent thereon are vague and indefinite in that it is not known what is meant by the definition of RA, RB, and/or RC which is not stated in the form of a proper Markush grouping.
Claim 1 recites the broad recitation heterocyclic ring having, zero, one or more heteroatoms in the definition of RF and RG taken together with the N+, and the claim also recites 5,6, 7, 8, or 9 ring members which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 1 and claims dependent thereon are vague and indefinite in that it is not known what is meant by the definition of RH which is not stated in the form of a proper Markush grouping.
Claim 11 recites the limitation "
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" in the definition of RF and RG. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the broad recitation
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in the definition of RF and RG taken together with the N+, and the claim also recites
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which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 13 recites the broad recitation benzyl or substituted benzyl in the definition of RH, and the claim also recites benzyl which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 11 recites the limitation "
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" in the 70th species in Table B. There is insufficient antecedent basis for this limitation in the claim.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 8-12, 14 and 33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Joshi et al., Helvetica Chimica Acta. The compounds of formula (I) where Y- is Br-; RA is H, OCH₃ or phenyl; RB is H; RC is H, 4-(CH3)3C, 4-(CH3)3C-CH2-(CH3)2C, 4-C9H19, octanyl, OCH₃ or phenyl or RA, RB and/or RC can be taken together with the phenyl ring to which they are attached can form a naphthyl; n is 0, 1, 2, 3 and 4; R1, R₂, R₃, R4, R₅ and R₆ are each H; RF and RG together with the N+ form a piperidino and RH is a ethyl, propyl, butyl, pentyl, hexyl, hexenyl, heptyl, octyl, nonyl, decyl, undecyl, dodecyl and tetradecyl or RF, RG and RH together with the N+ form a pyridino optionally substituted by methyl as set forth in examples 1-11, 17-27 and 51-62.
Claim(s) 1-5, 11, 14 and 33-35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brown et al., WO 93/22302. The compounds of formula (I) where Y- is Br-; RA is H; RB is H; RC is O-CH₂-phenyl; n is 5; R1, R₂, R₃, R4, R₅ and R₆ are each H; RF, RG and RH together with the N+ form a pyridinium substituted by methoxy as set forth in intermediate 8 on page 18, i.e. 1-[7-(4-Benzyloxyphenoxy)heptyl]-4-methoxypyridinum bromide.
Claim(s) 1-5, 8, 11-14 and 33-35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brown et al., WO 93/22302. The compounds of formula (I) where Y- is Br-; RA is H; RB is H; RC is H; n is 0; R1, R₂, R₃, R4, R₅ and R₆ are each H; RF and RG together with the N+ form a pyrrolidinium or piperdinium; and RH is benzyl as set forth in examples 6-8.
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 1-14 and 33-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 12,162,851. Although the claims at issue are not identical, they are not patentably distinct from each other because the compounds, compositions and method of use of the instant application embraces the compounds, compositions and method of use of the compounds of formula (I) of U.S. ‘851 where RF and RG together with the N⁺ form a ring selected from a substituted or unsubstituted ring selected from:
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.
Claims 1-13 and 33-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,332,446. Although the claims at issue are not identical, they are not patentably distinct from each other because the compounds, compositions and method of use of the instant application embraces the compounds, compositions and method of use of the compounds of formula (I) of U.S. ‘446 where RF and RG together with the N⁺ form a ring and RH is benzyl is as follows:
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wherein q is 0, 1, 2, 3, 4 or 5.
Claim Objections
Claim 38 is objected to as being of improper form. MPEP 2173.05(s) states, “Reference to Figures or Tables. Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table “is permitted only in exceptional circumstances where there is no practical way to define the invention in words …”. This condition is not met here, since it is practical to define the invention in words, simply by putting the structures into the claim. See Ex parte Fressola, 27 USPQ2d 1608, 1609.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDA L COLEMAN whose telephone number is (571)272-0665. The examiner can normally be reached Mon-Fri 10-6 (flex).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey H. Murray can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRENDA L COLEMAN/Primary Examiner, Art Unit 1624
