Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Status of Claims
Claims 19-27 are currently pending.
Priority
Instant application 18508594 filed 11/14/2023 claims priority as follows:
. This application is CON of 18/508,594 11/14/2023 ABN which is a CON of 18/317,417 05/15/2023 ABN
18/317,417 is a CON of 17/399,274 08/11/2021 PAT 11649243, 17/399,274 is a CON of 16/914,138 06/26/2020 PAT 11091493, 16/914,138 is a CON of 16/298,467 03/11/2019 PAT 10696681,
16/298,467 is a DIV of 14/776,366 09/14/2015 PAT 10287289, 14/776,366 is a 371 of PCT/US2014/023858 03/12/2014, PCT/US2014/023858 has PRO 61/791,247 03/15/2013.
Claim Rejection
Claim Rejection - 35 U.S.C 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claim 27 is rejected under U.S.C. 102(e) as being anticipated by Cabirol et al.(CN 104053771, WO2010142258 also published as US Pat 9139819B2, Used here, priority on US 61/561665 11/18/2011).
Cabirol et al. teach compound (2) ( see claim 1) which is identical to applicants compound I-3 of claim 27.
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150
214
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which is a racemic mixture as shown in claim 33 of Cabirol et al.
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174
517
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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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 19-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No.10287289 (“the ‘289 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘289 patent teach the limitations of the instant process. Claims 1-3 of the ‘289 patent teach active steps and the intermediates. Claims 4-7 of the ‘289 patent teach reagents. Claim 4-16 of reference patent teach recycling, solvents, pH, temperatures, palladium compounds, HCl salts, bases and hydrogen gas for example.
Claims 19-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No.11649243 (“the ‘243 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘243 patent teach the limitations of the instant process. Claims 1 of the ‘243 patent teach active steps and the intermediates. Claims 2-9 of the ‘243 patent teach reagents.
At least claim 26 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No.19696681 (“the ‘681 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim 1 of the ‘681 patent teach the limitations of the instant crystalline compound I-5(b) of claim 26.
TD submission against above patents used in the ODP rejection would overcome the rejection.
Conclusions
Claims 19- 27 are rejected. No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD Y MEAH whose telephone number is (571)272-1261. The examiner can normally be reached on monday-friday (8-7).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Mondesi can be reached on 571-272-0956. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMMAD Y MEAH/Examiner, Art Unit 1652
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