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 the Claims
1. This application is a CON of 17/751,806 05/24/2022 PAT 12269815, which is a CON of 16/755,255 04/10/2020 PAT 11352347, which is a 371 of PCT/US2018/056713 10/19/2018, which claims benefit of the provisional application 62/576,124 with a filing date 10/20/2017, and 62/674,422 with a filing date 05/21/2018.
2. Claims 1-30 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 1-30 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1, 2, and 12 of Wescott et al. US 12,269,815, and over claims 1, 16 and 23 of Wescott et al. US 11,352,347 respectively. Although the conflicting claims are not identical, they are not patentably distinct from each other, and reasons are as follows.
Applicants claim a compound/composition of formula (I), i.e.,
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174
556
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, wherein R is
-P(O)(OR1)(OR2), and R1 and R2 are hydrogen, aryl or alkyl, see claim 1. Dependent claims 2-28 further limit the scope of compound, i.e., specific variables, of R1 or R2, treated diseases including chronic spasticity or exertional heat stroke, formulations, and administration strategy.
Applicants claim a composition comprising a compound of formula (II-A), i.e.,
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170
566
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, see claims 29-30.
Wescott et al. ‘815 claims a compound/composition of formula (III), i.e.,
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132
362
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, see claim 1 in column 52. Wescott et al. ‘815 compound/composition is used for treating diseases including chronic spasticity or exertional heat stroke, see claim 12.
Wescott et al. ‘347 claims a compound/composition of formula (I) or its pharmaceutical acceptable salt, i.e.,
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158
399
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, wherein R is P(O)(OH)2 or -P(O)(OR1)(OR2) and R1 or R2 is hydrogen, alkyl or aryl, see columns 54-55 and example 10 in columns 34-35. Wescott et al. ‘347 compound/composition is used for treating diseases including chronic spasticity or exertional heat stroke, see claim 16 in columns 54-55.
Wescott et al. ‘347 claims a compound of formula (II-A), i.e.,
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170
566
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, see claims 23 in column 56.
The difference between instant claims and Wescott et al. ‘815 and ‘347 is that the instant claims are embraced within the scope of Wescott et al. ‘815 and ‘347.
One having ordinary skill in the art would find the claims 1-30 prima facie obvious because one would be motivated to employ the compounds/compositions of Wescott et al. ‘815 and ‘347 to obtain instant invention.
The motivation to make the claimed compounds/compositions derived from the known compounds/compositions of Wescott et al. ‘815 and ‘347 would possess similar activity to that which is claimed in the reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to REI TSANG SHIAO whose telephone number is
(571)272-0707. The examiner can normally be reached on 8:30 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached on 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1691
September 21, 2026
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