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 .
Claim Status
Claim 6 has been canceled.
Claims 1-5 and 7-18 are under examination.
Rejections Withdrawn
The rejection of claim 6 under 35 U.S.C. 112a as lacking written description is withdrawn in view of applicant’s cancelation of the claim.
Rejections 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.
The rejection of claim 17 under 35 U.S.C. 102(a)(1) as being anticipated by Adili, et al. is maintained.
Applicant's arguments filed December 2, 2024, have been fully considered but they are not persuasive. Applicant argues that the Adili reference discloses a role for 12-LO in platelet reactivity and that inhibitors of 12-LO may be used in anti-platelet therapy. Claim 17 is drawn to a pharmaceutical composition comprising a 12-LO inhibitor. The only structural requirement of the claim is a 12-LO inhibitor, which is taught by Adili. Therefore, the claim is anticipated by Adili.
The rejection of claims 15 and 16 under 35 U.S.C. 102(a)(1) as being anticipated by Holman, et al. is maintained.
Applicant's arguments filed December 2, 2024, have been fully considered but they are not persuasive. Applicant argues that Holman does not disclose a composition formulated for treatment of SARS COV-2 infection. In response to applicant’s argument, it is noted that claims 15 and 16 are drawn to a kit comprising a container and an 12-LO inhibitor, there are no other structural requirements for these claims. The features regarding COVID-19 are merely an intended use of the contents of the kit and do not provide any additional components or structural features to the kit itself.
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. For these reasons, the 12-LO inhibitor of Holman reads on the instant claims and the rejection is maintained.
The rejection of claims 1 and 4 under 35 U.S.C. 102(a)(1) as being anticipated by Bombardelli is maintained.
Applicant's arguments filed December 2, 2024, have been fully considered but they are not persuasive. Applicant argues that Bombardelli teaches a combination comprising additional elements besides the 12-LO inhibitor and that Bombardelli teaches components which act poorly against viral infections. In response to these arguments, firstly regarding the combination, the open “comprising” language of claim 1 allows for additional elements or additional method steps that are not specifically recited in the claims. Therefore, the additional components of Bombardelli do not prevent the composition from reading on the instant invention as claimed. Further, regarding the effectiveness of the composition, the claims do not include any information about the amount of effectiveness required by the composition administered. While Bombardelli may indicate that alkaloids act poorly against viral infections, there is no indication that they don’t work at all or should not be administered. Therefore, the composition of Bombardelli is considered enabled for treating coronavirus as indicated by the claims. Further, note that claim 1 is drawn in part to preventing symptoms associated with coronavirus infection and as such the subject is not required to have a coronavirus infection to be administered the composition. For these reasons the rejection is maintained.
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 rejection of claims 2-3 and 8-11 under 35 U.S.C. 103 as being unpatentable over Bombardelli as applied to claim 1 in view of Jin, et al. is maintained.
The rejection of claim 14 under 35 U.S.C. 103 as being unpatentable over Bombardelli as applied to claim 1 in view of Stebbing, et al. is maintained.
The rejection of claim 18 under 35 U.S.C. 103 as being unpatentable over Adili, et al. as applied to claim 17 in view of Virchow, et al. as evidenced by Jin, et al. is maintained.
Applicant's arguments filed December 2, 2024, have been fully considered but they are not persuasive. As set forth above, applicant argues that Bombardelli teaches a combination comprising additional elements besides the 12-LO inhibitor and that Bombardelli teaches components which act poorly against viral infections. Applicant further argues that the additional combination of references do not resolve the perceived deficiencies of the Bombardelli reference.
In response to these arguments, firstly regarding the combination the open “comprising” language of claim 1 allows for additional elements or additional method steps that are not specifically recited in the claims. Therefore, the additional components of Bombardelli do not prevent the composition from reading on the instant invention as claimed. Further, regarding the effectiveness of the composition, the claims do not include any information about the amount of effectiveness required by the composition administered. While Bombardelli may indicate that alkaloids act poorly against viral infections, there is no indication that they don’t work at all. Therefore, the composition of Bombardelli is considered enabled for treating coronavirus as indicated by the claims. Further, note that claim 1 is drawn in part to preventing symptoms associated with coronavirus infection and as such the subject is not required to have a coronavirus infection to be administered the composition.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Regarding the rejection of claim 18, applicant does not provide specific arguments directed to this rejection, however, the teachings of Adili have been addressed above.
Conclusion
THIS ACTION IS MADE FINAL. 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 ANNE M. GUSSOW whose telephone number is (571)272-6047. The examiner can normally be reached Monday to Friday 7am to 4pm, alternate Fridays off.
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, Daniel M. Sullivan can be reached at 571-272-0900. 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.
/ANNE M. GUSSOW/Supervisory Patent Examiner, Art Unit 1683