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 22 and 23 are currently pending in the instant application. Applicants have canceled claims 1-21 and added new claims 22-23 in an amendment filed on January 16, 2025. Claims 22 and 23 are rejected in this Office Action.
I. Priority
The instant application is CON of 17/311,526, filed on June 7, 2021 PAT 12, 172, 990 which is a 371 of PCT/US2019/064825, filed on December 6, 2019 which claims benefit of US Provisional Application 62/776,031, filed on December 6, 2018.
II. Information Disclosure Statement
The information disclosure statement (IDS) submitted on March 18, 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
III. Rejections
Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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.
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 22-23 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,172,990. Although the conflicting claims are not identical, they are not patentably distinct from each other because:
Applicants claim
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and all other species or a pharmaceutically acceptable salt of any of the foregoing are as defined in claim 22.
Determining the Scope and Content of the Issued Patent
Claim 1 of the issued patent claims
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429
310
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641
278
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344
356
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Ascertaining the Differences Between the Instant Application and the Issued Patent
The instant application is drawn to species that are encompassed by the genus compound of formula I claimed in the issued patent.
Finding Prima Facie Obviousness
The genus compound of the issued patent encompasses the species of the instant claim 22. The scope of the compounds in the patented claims 1-19 and the scope of the claims 22-23 of the instant application overlap and include patented subject matter in the instant claims. Therefore, one of ordinary skill in the art would be motivated to prepare and claim the scope of the compounds in the issued patent again in the instant application since the scope already patented encompasses all of the species in instant claim 22. As a result, the claims are rejected under obviousness-type double patenting.
IV. Objections
Claim Objections
Claim 22 is objected to because of the following informalities: claim 22 contains the phrase “A compound selected from” which should read “A compound selected from the group consisting of”. Appropriate correction is required.
***The closest prior art is WO 03/035077 which teaches compounds such as
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but does not teach compounds with an oxazole
ring substituted on the amide group as seen in the instant compounds instead of a phenyl ring.
V. 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
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