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
Claims 1-7 are currently pending in the instant application. Claims 1-7 are rejected in this Office Action.
I. Priority
The instant application is a CON of 18/469,032, filed on September 18, 2023 which is a CON of 17/470,063, filed on September 9, 2021, PAT 11,780,805 which is a CON of 16/891,464, filed on June 3, 2020 PAT 11,149,000 which is a CON of 16/338,925, filed on April 2, 2019 PAT 10,710,958 which is a 371 of PCT/US2017/055598, filed on October 6, 2017 which claims benefit of US Provisional Application 62/404,917, filed on October 6, 2016.
II. Information Disclosure Statement
No information disclosure statement (IDS) was filed in the instant application.
III. Rejections
Nonstatutory Obviousness-type 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 obviousness-type 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); 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 conflicting 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.
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 1-7 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,781,805. Although the conflicting claims are not identical, they are not patentably distinct from each other because:
Applicants claim
PNG
media_image1.png
724
771
media_image1.png
Greyscale
Determining the Scope and Content of the Issued Patent
Claim 1 of the issued patent claims
PNG
media_image2.png
381
310
media_image2.png
Greyscale
PNG
media_image3.png
525
692
media_image3.png
Greyscale
Ascertaining the Differences Between the Instant Application and the Issued Patent
The issued patent claims a method of use for a compound 1 wherein the instant claims are drawn to a compound of formula 1 that encompasses the species claimed in the issued patent and similar methods of using the species.
Finding Prima Facie Obviousness
The genus compound of the instant application encompasses the species compound of the patented claim 1. The species is instant claim 2 is the same species in the patented claim 4. The scope of the diseases treated in the patented claims 1-18 and the scope of the claims 1-7 of the instant application overlap and include patented subject matter in the instant claims. Also, the disorders or conditions of the issued patent and the methods of the instant claims are treated using the same activity, for example, ligands for the dopamine transporter and alpha2 adrenergic receptors. Therefore, one of ordinary skill in the art would be motivated to prepare and claim the scope of the methods in the issued patent again in the instant application since the scope already patented falls within the full scope of the instant claims 1-7. As a result, the claims are rejected under obviousness-type double patenting.
Claims 1-7 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,149,000. Although the conflicting claims are not identical, they are not patentably distinct from each other because:
Applicants claim
PNG
media_image1.png
724
771
media_image1.png
Greyscale
Determining the Scope and Content of the Issued Patent
Claim 1 of the issued patent claims
PNG
media_image4.png
404
319
media_image4.png
Greyscale
PNG
media_image5.png
168
278
media_image5.png
Greyscale
Ascertaining the Differences Between the Instant Application and the Issued Patent
The issued patent claims a method of use for a compound of the formula I wherein the instant claims are drawn to a compound the same formula found in the issued patent and similar methods of using the same formula.
Finding Prima Facie Obviousness
The genus compound of the instant application is encompassed by the broader genus compound of the patented claim 1. The species is instant claims 2 is the same species in patented claims 3 and 4. The scope of the diseases treated in the patented claims 1-9 and the scope of the claims 1-7 of the instant application overlap and include patented subject matter in the instant claims. Also, the disorders or conditions of the issued patent and the methods of the instant claims are treated using the same activity, for example, ligands for the dopamine transporter and alpha2 adrenergic receptors. Therefore, one of ordinary skill in the art would be motivated to prepare and claim the scope of the methods in the issued patent again in the instant application since the scope already patented falls within the full scope of the instant claims 1-7. As a result, the claims are rejected under obviousness-type double patenting.
Statutory 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.
Claim 1-7 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 2 and 13-20 of prior U.S. Patent No. 10,710,958 . Claim 1 is drawn to the following:
PNG
media_image1.png
724
771
media_image1.png
Greyscale
This is a statutory double patenting rejection.
IV. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shawquia Jackson whose telephone number is 571-272-9043. The examiner can normally be reached on 7:00 AM-3:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Adam Milligan can be reached on 571-270-7674. 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).
/SHAWQUIA JACKSON/ Primary Examiner, Art Unit 1626
Prosecution Insights