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 53-72 are currently pending in the instant application. Applicants have canceled claims 1-52 and added new claims 53-72 in an amendment filed on January 13, 2025. Claims 53-72 are rejected in this Office Action.
I. Priority
The instant application is a CON of 17/327,217, filed on May 21, 2021 which is a CON of 16/370,404, filed on March 29, 2019 PAT 11,058,688 which claims benefit of US Provisional Application 62/650,151, filed on March 29, 2018.
II. Information Disclosure Statement
The information disclosure statement (IDS) submitted on January 13, 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
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 53-72 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,540,139. Although the conflicting claims are not identical, they are not patentably distinct from each other because:
Applicants claim
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695
789
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Determining the Scope and Content of the Issued Patent
Claim 1 of the issued patent claims
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164
268
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Greyscale
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776
549
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Ascertaining the Differences Between the Instant Application and the Issued Patent
The instant application claims a broader genus of formula I
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107
145
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which encompasses the issued patent’s compound
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139
199
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with the same utility.
Finding Prima Facie Obviousness
The genus compound of the instant application encompasses the narrower genus compound of the patented claims 1-18. The scope of the compounds in the patented claims 1-18 and the scope of the claims 53-72 of the instant application overlap and include patented subject matter in the instant claims. The issued patent claims species such as
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179
194
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in issued claim 9 which read on the instant compounds of formula I. 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 falls within the full scope of the instant claims 53-72. As a result, the claims are rejected under obviousness-type double patenting.
Claims 53-72 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,559,497. Although the conflicting claims are not identical, they are not patentably distinct from each other because:
Applicants claim
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695
789
media_image1.png
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Determining the Scope and Content of the Issued Patent
Claim 1 of the issued patent claims
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278
272
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Greyscale
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784
608
media_image8.png
Greyscale
Ascertaining the Differences Between the Instant Application and the Issued Patent
The instant application claims a broader genus of formula I
PNG
media_image4.png
107
145
media_image4.png
Greyscale
which encompasses the issued patent’s compound
PNG
media_image5.png
139
199
media_image5.png
Greyscale
with the same utility.
Finding Prima Facie Obviousness
The genus compound of the instant application encompasses the narrower genus compound of the patented claims 1-19. The scope of the compounds in the patented claims 1-19 and the scope of the claims 53-72 of the instant application overlap and include patented subject matter in the instant claims. The issued patent claims species such as
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192
158
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in issued claim 19 which read on the instant compounds of formula I. 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 falls within the full scope of the instant claims 53-72. As a result, the claims are rejected under obviousness-type double patenting.
Claims 53-72 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-41 of U.S. Patent No. 11,058,688. Although the conflicting claims are not identical, they are not patentably distinct from each other because:
Applicants claim
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695
789
media_image1.png
Greyscale
Determining the Scope and Content of the Issued Patent
Claim 1 of the issued patent claims
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782
614
media_image10.png
Greyscale
Ascertaining the Differences Between the Instant Application and the Issued Patent
The instant application claims a broader genus of formula I
PNG
media_image4.png
107
145
media_image4.png
Greyscale
which encompasses the issued patent’s compound
PNG
media_image5.png
139
199
media_image5.png
Greyscale
with the same utility.
Finding Prima Facie Obviousness
The genus compound of the instant application encompasses the narrower genus compound of the patented claims 1-41. The scope of the compounds in the patented claims 1-41 and the scope of the claims 53-72 of the instant application overlap and include patented subject matter in the instant claims. The issued patent claims species such as
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215
202
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Greyscale
in issued claim 39 which read on the instant compounds of formula I. 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 falls within the full scope of the instant claims 53-72. As a result, the claims are rejected under obviousness-type double patenting.
Claims 53-72 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 12,186,324. Although the conflicting claims are not identical, they are not patentably distinct from each other because:
Applicants claim
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695
789
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Greyscale
Determining the Scope and Content of the Issued Patent
Claim 1 of the issued patent claims
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398
312
media_image12.png
Greyscale
Ascertaining the Differences Between the Instant Application and the Issued Patent
The instant application claims a broader genus of formula I
PNG
media_image4.png
107
145
media_image4.png
Greyscale
which encompasses the issued patent’s compound
PNG
media_image5.png
139
199
media_image5.png
Greyscale
with the same utility.
Finding Prima Facie Obviousness
The genus compound of the instant application encompasses the narrower genus compound of the patented claims 1-26. The scope of the compounds in the patented claims 1-26 and the scope of the claims 53-72 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 falls within the full scope of the instant claims 53-72. As a result, the claims are rejected under obviousness-type double patenting.
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
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