DETAILED ACTION
This Action is in response to the communication filed on 11/13/2025.
Claims 1, 2, 9, 18, 35 are pending and are addressed herein.
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 .
Claim Rejections - 35 USC § 102
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 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 1-2, 9, 35 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 104288135 A (hereinafter “Huang” - English translation by Google Translate provided).
Regarding claims 1-2, Huang teaches a method comprising contacting a pancreatic cancer cell with fluoxetine, an antidepressant and also an SLC38A2 inhibitor as evidenced by the instant specification (e.g., see Translation – abstract, page 2 under accompanying drawing 1, etc.).
Regarding claims 9 and 35, Huang teaches administration of 10mM fluoxentine to human pancreatic adenocarcinoma PANC-1 cells, which are human pancreatic ductal adenocarcinoma cells – official notice taken if necessary (e.g., see page 2 under accompanying drawing 1, etc.).
Claim Rejections - 35 USC § 103
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.
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.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over by CN 104288135 A (“Huang” - English translation provided) as applied to claims 1, 2, 4, 9 in the rejection above, in view of Passik and Roth Psycho-oncology 8: 268-272; 1999 (hereafter “Passik”).
Huang teaches treating pancreatic cancer cells with fluoxentine a known antidepressant and an anticancer agent (as indicated in the rejection above), and further teaches that fluoxentine can be used to treat tumors in animals as well, including pancreatic adenocarcinomas (e.g., see page 2 just above “Accompanying drawing explanation”).
Huang does not teach that the method is used in combination with resection of a pancreatic tumor.
However, resection of eligible pancreatic tumors was well known in the prior art. For instance, Passik teaches that depression and anxiety occur more frequently in cancer of the pancreas than in other forms of intra-abdominal malignancies and other cancers in general, and further reports a patient who present panic attacks prior to pancreatic cancer diagnosis and whose symptoms resolved following resection of the tumor (e.g., see abstract, page 269 first paragraph, etc.).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art prior to the day the claimed invention was filed to combine fluoxentine treatment with resection of a pancreatic tumor in a animal who suffers from depression/anxiety/panic attacks and who also has a pancreatic tumor, with a reasonable expectation of success. The motivation to combine is based on the fact that paroxetine was a known antidepressant and resection of pancreatic tumors in a patient that has panic attacks, not simply anxiety, was also known. There would have been a reasonable expectation of success based on the positive results reported in the prior art. It is also noted that it would have been a matter or combining known treatments for treating pancreatic cancer: paroxetine and pancreatic tumor resection.
The combination of prior art satisfies the factual inquiries as set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966). Once this has been accomplished the holdings in KSR can be applied (KSR International Co. v. Teleflex Inc. (KSR), 550 USPQ2d 1385 (2007):
“Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.”
Response to Arguments
With respect to the rejectionof claims under 35 USC 112(a) (written description rejection) Applicant’s arguments, see have been fully considered and in view of the amendment to the clams are persuasive. The rejection has been withdrawn.
Applicant’s argument with respect to the rejections of claim(s) under 35 USC 102 and 103 based on Chen have been fully considered and in view of the amendment are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Huang as indicated in the rejections above.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to J. E. Angell whose telephone number is (571)272-0756. The examiner can normally be reached Monday-Friday (8:30-5:00).
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, Jennifer Dunston can be reached at (571) 272-2916. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
J. E. Angell
Primary Examiner
Art Unit 1637
/J. E. ANGELL/Primary Examiner, Art Unit 1637