DETAILED ACTION
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 . Claims 29, 38-45 filed January 23, 2026 are currently pending. Claims 29 and 41 are independent.
Election/Restrictions
Applicant’s election without traverse of Group (I), claims 29 and 41 in the reply filed on 01/23/2026 is acknowledged.
Claims 38-40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/23/2026.
Secondly, Applicant’s election without traverse of
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in the reply filed on 01/23/2026 is acknowledged.
Priority
Acknowledgment is made of the continuation of Application 18213464, now U.S. Patent 12,440,491. Application 18213464 is a continuation of Application 17363878, now U.S. Patent 11,766,436. Application 17363878 is a continuation of Application 16402538, now U.S. Patent 11,090,304. Application 16402538 claims priority to U.S. Provisional Application 62667282 filed 05/04/2018.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/27/2025, 09/19/2025 and 01/23/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim 29 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,090,304.
Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
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As shown above, the subject matter of the present claims overlaps with the subject matter found in claim 1 of U.S. Patent 11,090,304. An example of this is the claimed compound is found in claim 1 of U.S. Patent 11,090,304 (col. 1145). In addition, the elected species
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is found in col. 1211 of claim 1 in U.S. Patent 11,090,304.
Claim 29 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 11,285,156
Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
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As shown above, the subject matter of the present claims overlaps with the subject matter found in claim 1 of U.S. Patent 11,285,156. An example of this is the claimed compound is found in claim 1 of U.S. Patent 11,285,156 (col. 967).
Claim 29 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,766,436.
Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
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As shown above, the subject matter of the present claims overlaps with the subject matter found in claim 1 of U.S. Patent 11,766,436. An example of this is the claimed compound is found in claim 1 of U.S. Patent 11,766,436 (col. 1122).
Conclusion
Claims 41-45 are allowed. Claim 29 is rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE W KOSTURKO whose telephone number is (571)270-5903. The examiner can normally be reached M-F 9:00-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CLINTON A BROOKS can be reached at 571-270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEORGE W KOSTURKO/Primary Examiner, Art Unit 1621
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