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 .
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.
Election/Restrictions
Examiner have maintained the 102 rejection on record.
Examiner have withdrawn Objection to the claims and specification.
Applicant cancelled claims 4-5, 9-10, 12, 14 and 18, therefore election of species requirement for species of antimycotic compound is moot.
Examiner is making this non-final because claim 6 and 16 were not rejected in previous office action.
Applicant’s election of species without traverse in the reply filed on 04/24/2025 is acknowledged.
Applicants provided a compliant species of:
Species of formula I:
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3,6-Dihydroxyflavone, where R1 and R2 = OH and R3, R4, R5, R6, and R7 = H; and
Species of fungal cell: C. albicans; and
Examiner found prior art on applicant elected species. Therefore, Markush search was not extended to the full scope of independent claims 1 and 7 according to Markush search practices.
Applicant elected species reads on claims 1-3,6-8, 11, 13 and 15-17 are examined in this office action.
Current Status of 17/629,464
This Office Action is in response to the amended claims of 07/15/2025.
Claims 1, 7 and 13 are currently amended; and claims 2-3, 6,8 11 and 15-17 were previously presented.
The amended claims 1-3,6-8, 11, 13 and 15-17 are examined in this office action.
Priority
Effected filing date is 7/23/2019 due to foreign priority EP 19187930.3.
Response to Arguments
Examiner acknowledges the receipt of applicant’s claim amendment and remarks of 07/15/2025. Examiner have reviewed these remarks and amendments.
Regarding claim objection, applicant amended claim 8 by deleting “Hhydroxyflavone”, with 6-hydroxyflavone. Thus, overcoming clam objection.
Regarding objection to the title, applicant changed the title from “Antimycotic” to “METHOD OF REDUCING BIOFILM FORMATION AND TREATING FUNGAL INFECTION BY FUNGAL CELLS” thus overcoming Objection to the Specification. Therefore objection to the specification is withdrawn.
Regarding 102 rejection, applicant amended claim 1 by deleting “inhibiting or preventing the growth of” and added “reducing formation of a biofilm by a”. This amendment does not change the scope of the bases for the 102 rejections on record. Reducing formation of biofilm is considered same as “inhibiting and preventing the growth” using broadest interpretation of the claim. Moreover, prior art of Military uses applicant elected species, 3,6-Dihydroxyflavone of flavone against candida albicans (applicants’ elected species of fungal cell) applicant elected species of (MILITARY MEDICAL, table on pages 12-18, compound 22). Therefore 102 rejection is maintained.
Claim Rejections - 35 USC § 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 7-8, 11, 13, 15, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated MILITARY MEDICAL; (CN 105669625A 15 June 2016).
Military discloses 3,6-Dihydroxyflavone (applicant elected species, claims 1-2, 7-8) in combination with Fluconazole (anticipating claims 11) that have antifungal activity (examiner is interpreting this as reducing the growth of non-filamentous biofilm since fungi forms biofilm) against candida albicans (applicants’ elected species of fungal cell) (anticipating claim 3) (MILITARY MEDICAL, table on pages 12-18, compound 22,) anticipating independent claim 1 and 7. Military further discloses a method of treatment administered to humans (MILITARY page 4, las paragraph)(anticipating claims 15, and 17) and suggests administration by orally, topically and intravenously (page 5, paragraph 4) thus anticipating claim 13.
New Rejections
Claim Rejections - 35 USC § 112
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 7-8, 11, 13, and 17 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 7 contains the limitation “including” (second line—added by amendment). As drafted, the “including” renders the metes and bounds of claim 7 undefined (hence rendering claim 7 indefinite) since the artisan does not know if the limitations following “including” are merely exemplary or are required limitations of the claim.
Claims 8, 11, 13, and 17 are similarly rejected as indefinite since these claims refer back to rejected claim 7 but do not remedy the rationale underpinning the basis for rejecting claim 7.
Claim Rejections - 35 USC § 103
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 CFR 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 1-3, 6-8, 11, 13, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over
MILITARY MEDICAL (CN 105669625A, publication date 15 June 2016).
In view
BASSLER BONNIE et.al. (WO-2017177196-A, publication date 12 October 2017)
1. Determining the scope and contents of the prior art.
MILITARY et.al. teaches claims 1-3, 7-8, 11, 13, 15, and 17 (see 102 rejection)
Bassler teaches compound flavones (Quorum sensing(QS) inhibitors) to inhibit(examiner interpret this as reducing) biofilm formation caused by microorganism(claim 9) and can be administered to plants (paragraphs [106],[160]) thereby helping to teach claims 6 and 16.
2. Ascertaining the differences between the prior art and the claims at issue.
Military et.al does not teach a method of reducing formation of biofilm forming fungal cell in plant.
Bassler does not teach method of reducing biofilm forming in fungal cell.
3. Resolving the level of ordinary skill in the pertinent art.
The level of ordinary skill in the art is represented by an artisan who has sufficient background in treating microorganism to reduce biofilm formation caused by fungal cell in plants.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
A person skilled in the art would be motivated to reduce biofilm formation in fungal cell with compound 3,6-Dihydroxyflavone,
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, in plant, since it’s known in the prior art, biofilm formation in fungal cell, can be reduced with 3,6-Dihydroxyflavone (applicant elected species, claims 1-2, 7-8) in combination with Fluconazole (claims 11) against candida albicans (applicants’ elected species of fungal cell) (claim 3) (MILITARY MEDICAL, table on pages 12-18, compound 22). Moreover, flavones are known to be applied to plant as QS inhibitor to reduces biofilm formation (Bassler et.al. claim 8 and paragraphs [106],[160]) (claims 6 and 16), therefore it is expected 3,6-Dihydroxyflavone can be applied to plant to reduce biofilm formation in fungal cell. Therefore it would be prima facie obvious to combine the teaching Military et.al. with Bassler et. al. and apply the flavone, above, to any part of the plant.
Conclusion
No claims are allowable.
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/R.I./Examiner, Art Unit 1625
/JOHN S KENYON/Primary Patent Examiner, Art Unit 1625