*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 .
Applicant’s response dated January 4, 2026 is acknowledged.
Priority
This application is a 371 of PCT/KR2020/001090 filed on 01/22/2020, and claims
foreign priority in KR 10-2019-0018998 filed on 02/19/2019.
Claim Status
Claims 1, 2, 4 and 8-12 are pending. Claims 3 and 5-7 were cancelled. Claims 1, 2, and 9-
12 are withdrawn. Claim 4 was amended. Claims 4 and 8 are examined.
Withdrawn Claim Rejections -35 USC§ 112
Rejection of claim 8 is withdrawn because claim 4 was amended by deleting the
concentrations having units uM.
New Claim Rejections – 35 USC § 112
Necessitated by Amendment
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4 and 8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 4 was amended to require the composition to have an algicidal effect that substantially removes the algae within initial 3 days after treating the water-soluble composition. The phrase introduces new matter because it is not supported in the application as originally filed. Applicant is requested to provide a citation in the application as originally filed that supports the newly added limitation. Claim 8 is rejected for new matter because it depends from claim 4 and contains all limitations of claim 4.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
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.
Claims 4 and 8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 was amended to require the composition to have an algicidal effect that substantially removes the algae within initial 3 days after treating the water-soluble composition. The phrase is indefinite because it teaches treating the water-soluble composition, which does not make sense because the water-soluble composition is the treatment composition. It would be logical to treat the algae with the water-soluble composition in order to substantially remove the algae. This interpretation is given for the purpose of applying prior art.
Claim 8 is indefinite because it depends from an indefinite base claim.
Maintained Claim Rejections -35 USC§ 103
Modified as Necessitated by Amendment
In the event the determination of the status of the application as subject to AIA 35 U.S.C.
102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a
new ground of rejection if the prior art relied upon, and the rationale supporting the rejection,
would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness
rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.
Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35
U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the
claims the examiner presumes that the subject matter of the various claims was commonly
owned as of the effective filing date of the claimed invention(s) absent any evidence to the
contrary. Applicant is advised of the obligation under 37 CPR 1.56 to point out the inventor and
effective filing dates of each claim that was not commonly owned as of the effective filing date
of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Han (KR 10-
2017-0065171 A, Published June 13, 2017 - of record in ID dated 08/19/2021 and machine
translation of the document - of record in PTO-892 dated 03/29/2024).
The teachings of Han are related to compositions for controlling harmful algae
comprising naphthoquinone derivative and method of controlling harmful algae using the same
(Abstract - translation). The composition comprises a compound selected from the group
consisting of compounds of formulae 1-5. The compound represented by any one of the
compounds of formulae 1-5 includes a compound selected from compounds represented by
chemical formulae 6-56, a homologue thereof, or a salt thereof, as an active ingredient (page 4 -
translation). Compound of formula 51 has the structure:
PNG
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65
121
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(paragraph 0097 - original document). When the compound contains a basic
group, an acid addition salt can be formed, where hydrochloric acid is an example of an acid salt
(first full paragraph on page 7 - translation). Paragraph bridging pages 23-24 of the translation
describes a method making the compound of formula 51. Example 1 on pages 25-26 of the
translation describes a method of testing compounds of formula 6-56 against various
microorganisms. As a result, the compounds of formulae 6-56 were found to have a mortality of
90% or more at the concentrations of 1, 5, 10, and 20 μM against Anabaena sp. and Microcystis
sp. In particular, the effect of 90% or more was observed even at low concentration of 1 μM, and
it was confirmed only harmful cyanobacteria could be specifically controlled.
It would have been prima facie obvious to a person of ordinary skill in the art before the
effective filing date of the claimed invention to have formed a composition for controlling
harmful algae comprising naphthoquinone derivative wherein the derivative is a salt of a
compound having the structure of formula 51, with a reasonable expectation of success because
Han teaches a composition for controlling harmful algae comprising naphthoquinone derivative
wherein the derivative is a compound selected from compounds 6-56 or a salt thereof as an
active ingredient. Han teaches a method of making the compound of formula 51, which reads on
a composition. The method does not teach converting the compound into its salt form. It would
have been obvious to have modified the method by converting compound of formula 51 into a
salt using hydrochloric acid to make a salt of compound of formula 51, with a reasonable
expectation of success because Han teaches using hydrochloric acid to make an addition acid salt
of the compound that contains a basic group. There would have been a reasonable expectation of
success because compound 51 comprises a basic group. Han's composition contains the same
compound as claimed and it would have been reasonable to expect that the composition is watersoluble.
It would have been further obvious to have formed a composition comprising the HCl
salt of compound of formula 51 in a concentration of 1 μM because Han teaches that compounds
6-51 at a concentration of 1, 5, 10, and 20 μM caused 90% mortality when tested against
Microcystis sp.
Claim 4 was amended to require the composition to have an algicidal effect that substantially removes the algae within initial 3 days after treating the water-soluble composition. The phrase is indefinite for reasons described above and it is given broadest reasonable interpretation that is logical and consistent with the specification as filed. Han’s composition is structurally the same as claimed composition and it would have been reasonable to expect Han’s composition to have an algicidal effect that substantially removes the algae within initial 3 days after treating the algae with the water-soluble composition when tested under the same conditions as instantly claimed composition, absent evidence to the contrary. A composition and its properties are inseparable.
Claim 4 describes an intended use of the composition. Han's composition could have
been used for controlling algae selected from those listed in claim 4, absent evidence to the
contrary, because it is structurally identical to the claimed composition. A composition and its
properties are inseparable.
Regarding claim 8, it would have been obvious to have formulated the composition as a
liquid formulation, with a reasonable expectation of success because Han teaches formulating the
composition into a form of an emulsion (page 11 fourth paragraph - translation) and Example 1
describes a composition having the compound 51 in a concentration expressed as molarity and
the skilled artisan would have understood that the composition in Example 1 is a liquid
formulation in which compound 51 is a solute dissolved in a solvent.
It is noted that the machine translation recites "harmful birds" in the cited paragraph.
However, it is apparent from page 25 that "birds" was incorrectly translated and should have
been "algae". Page 25 states "freshwater aquatic birds such as Microcystisaeruginosa
(cyanobacteria)”, and it is apparent from this teaching that "birds" should have been "algae"
because cyanobacteria is an algae.
Combining prior art elements according to known methods to obtain predictable results
supports obviousness.
Response to Arguments
Applicant’s arguments submitted in the remarks dated January 4, 2026, were fully considered but are not persuasive for the following reasons.
Argument regarding the most significant difference between Han and the claimed invention is not persuasive because the applicant did not show with evidence that Han’s composition would not have had the same effect as claimed composition when tested under identical conditions. The newly added phrase in claim 4 describes composition properties under certain conditions, and it is the examiner’s position that Han’s composition would have exhibited the same properties as claimed because Han’s composition meets all of the structural requirements of the claimed composition.
Argument that Han’s composition fails to provide practical utility in real-world applications where rapid control of exponentially growing harmful algae is essential, is not persuasive because the claims are not drawn to a method of rapidly controlling exponentially growing harmful algae. The claims are drawn to a composition and Han’s composition is sufficient to render the claimed composition obvious.
Arguments related to unexpected results are not persuasive for the following reasons.
The data in the Seo affidavit was fully considered, but it is not sufficient to overcome the
obviousness rejections for the following reasons.
Any differences between the claimed invention and the prior art may be expected to
result in some differences in properties. The issue is whether the properties differ to such an
extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375
(Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and
claimed antidepressants were not unexpected). In In re Waymouth, 499 F.2d 1273, 1276,
182 USPQ 290,293 (CCPA 1974), the court held that unexpected results for a claimed range as
compared with the range disclosed in the prior art had been shown by a demonstration of "a
marked improvement, over the results achieved under other ratios, as to be classified as a
difference in kind, rather than one of degree." Compare In re Wagner, 371 F.2d 877, 884, 152
USPQ 552, 560 (CCPA 1967) (differences in properties cannot be disregarded on the ground
they are differences in degree rather than in kind); Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd.
Pat. App. & Inter. 1992) ("we generally consider a discussion of results in terms of' differences
in degree' as compared to 'differences in kind' ... to have very little meaning in a relevant legal
sense"). See also UCB, Inc. v. Actavis Labs, UT, Inc., 65 F.4th 679, 693, 2023 USPQ2d 448
(Fed. Cir. 2023) ("A difference of degree is not as persuasive as a difference in kind - le., if the
range produces "'a new property dissimilar to the known property,"' rather than producing a
predictable result but to an unexpected extent.").
In the present case, the affidavit shows algicide data for claimed compound of formula I
and its free base against Dolichospermum. The data show that both compounds are algicidal to
different degrees, which would have been expected in view of Han because Han teaches that
compound 51 and its HCI salt are suitable for controlling harmful algae. Thus, the results the
applicant observed are not considered unexpected in view of the record. Additionally, it would
have been reasonable to expect differences in effectiveness between a free base and its acid salt
because they have different chemical structures and differences in performance would have been
expected.
It is unknown if the claimed composition is commensurate in scope with the composition
that produced the asserted unexpected results because the affidavit does not state what
components are present in the tested composition, other than the claimed compound in two
specific concentrations. The claims broadly recite a composition that requires a compound of
formula I. It is the examiner's position that the claimed composition is not commensurate in scope with the tested composition that produced the asserted unexpected result because all components of the tested composition are unknown, and presently claimed composition only requires the compound of formula I. The tested compositions contain the compound of formula I in specific concentrations whereas the claims do not limit the amount of the compound.
Whether the unexpected results are the result of unexpectedly improved results or a
property not taught by the prior art, the "objective evidence of nonobviousness must be
commensurate in scope with the claims which the evidence is offered to support." In other
words, the showing of unexpected results must be reviewed to see if the results occur over the
entire claimed range. In the instant case, the applicant has not presented sufficient evidence that would have lead the skilled artisan to conclude that the observed results would have occurred over the entire breadth of the claims.
Applicant argued that long term effects can be extrapolated from the data and pointed to
dotted lines in the two graphs, and because algae control is a long term project, concluded that
the claimed composition is clearly superior over Han's composition. The claimed composition
can bring down algae' s existing baseline and control algae and Han's cannot.
These arguments are not persuasive because they are not supported by evidence and they
are not persuasive in view of Han's teachings in example 1. Han teaches testing compound 51
against Microcystis at various concentrations for 7 days (168 hours) or 10 days (240 hours). As a
result, the compounds of the formulas (6) to (56) were found to have a mortality of 90% or more
at the concentrations of 1, 5, 10 and 20 μM against the cyanobacteria Anabaena sp. and
Microcystis sp. In particular, the effect of 90% or more was observed even at a very low
concentration of 1 uM, and it was confirmed that only harmful cyanobacteria could be
specifically controlled.
Applicant's tests were performed for 96 hours at most which is considerably less than
Han's time periods. One of ordinary skill in the art cannot conclude that the claimed invention
would have provided superior long term algae control compared to Han's composition especially
in view of Han's teachings that greater than 90% mortality ofMicrocystis sp. was observed after
7 or 10 days for compound 51.
Applicant's argument that when one tries to control algae, usually there is algae growing
there already, and Compound B cannot bring down algae from its existing spread significantly
and it reaches an equilibrium with algae at best, is not persuasive because it is not supported by
evidence. Applicant has not provided any results supporting such conclusion. The data submitted in the affidavit shows that within first 96 hours of treatment, the salt form performs better against Dolichospermum compared to the free base form of the claimed compound. However, the free form which corresponds to Han's compound 51 still showed algicidal effects against the microorganism. The difference is a difference in degree and it is not sufficient to overcome the rejection because it would have been obvious in view of Han's teachings to expect compound 51 in free form to have algicidal properties. Additionally, Han does not teach that a free base form of a compound and its acid salt are expected to have the same algicidal effects, thus applicant's statement that observed results are unexpected is not persuasive. There is no reference on the record teaching that the two compounds are expected to have the same algicidal properties. The skilled artisan would have expected differences in performance of a free base form compared to its salt form because the free base form and its salt form are structurally different and expected to have different properties. Applicant's showing that the two compounds have a different degree of algicidal effects is not sufficient to overcome the obviousness rejection with unexpected results. The skilled artisan would not have expected a compound in its free base form to have the same properties as the compound in its salt form.
Applicant's argument that the affidavit shows that difference between the prior art and
the claimed invention is a difference in kind is not persuasive because the affidavit does not
show long term data that supports applicant's conclusion and it was known from Han that
compound 51 showed a 90% mortality rate after 7 or 10 days. In the first 96 hours, Han's
compound 51 showed a decrease of algae over time, while not as effective as claimed compound
the decrease was still present. The attachment of to the affidavit shows numerical values of cell
count at various time points and algicide concentrations. Applicant argued that Han's compound
51 initially caused a decrease in cell count that was followed by an increase in cell count and
concluded that an equilibrium was reached and that a further decrease would not have been
expected. The examiner disagrees with this characterization because after the increase, the cell
count then decreased. For example, the average for 1 uM at 96 hr is 2809, which is less than the
increased value of 3306 and less than the starting count of 3000. Similarly at 2 uM the count
decreases from 3000 to a low of 2557, which is followed by an increased to a high of 3029 and
final cell count at 96 hours is 2224, which lower than the highest cell count and the starting cell
count. Even the claimed compound initially showed a decrease in cell count, followed by an
increase in cell count, and followed by another decrease in cell count at both concentrations.
Thus, the two compounds appear to follow the same trend where the salt form has a higher
degree of efficacy than the free base form in the first 96 hours of treatment.
In response to arguments that the claimed compound has a superior initial algicidal effect is not sufficient to overcome the rejection because the applicant did not show that the effect was unexpected.
See MPEP 716.02(a)-(f) for the requirements applicant has to meet in order to rebut an
obviousness rejection with unexpected results.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ALMA PIPIC/Primary Examiner, Art Unit 1617