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 .
See Interview summary 03/05/2026. No response was received.
Claims 17-33, 35-39 and new claim 40 are pending.
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.
Previously presented rejection of claims 33, 35-39 and 40 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, is maintained.
Amendments to base claim 33 are considered.
Amendments to base claim 33 and Applicants arguments are not persuasive.
The amendments defined part of the possible components (in part), namely the component 1. The structural identities of the components 2 and 3 are unclear. The combination with component 1 is only one of the options. Applicant points to disclosure at pages 18-21 and examples. These generic descriptions are considered. Every component in the (now) three possibilities of the claimed complex is recited with broad umbrella terms, such that the metes and bounds of the claims is unclear.
While it is acknowledged that breadth is not indefinite, a comprehensive patent search could not be completed with the combination.
Thus even though one of skill in the art at once understands the meaning of the terms ‘lipase inhibitor’ and ‘hydrogel’, the structural identity of the complex is unclear. For example, it is unclear if the complex is covalent hydrogel modification which involves attaching molecules or functional groups to the hydrogel network through covalent bonds. The terms lipase inhibitor and hydrogel are umbrella terms encompassing small molecules, protein molecules etc. with and without reactive functionalities, for example, required for the ‘attachment’, that is, bond formation with hydrogel. In the alternate non-covalent modification of hydrogels involves altering their properties by introducing non-permanent, reversible interactions like hydrogen bonds, hydrophobic interactions, or ionic interactions. Orlistat and caffeine are examples of these two possibilities with lipase inhibiting activity.
The base claim 33 does not define the critical elements necessary for complete patent search. Dependent terms do not resolve the issues of the base claims. Thus for example, claim 34 defines the hydrogel with its potential ‘function’ rather than ‘structure’, for example polymer A and polymer B are not defined anywhere in the claims. Claim 25 address part of the issue, what is the ‘functional group’ here (which presumably reacts with what) is unclear. The term ‘derivatives’ in claim 36, implies what are positively recited with art-recognized nomenclature. The term ‘contained’ in claim 37 is confusing, because it is unclear whether the w/w ratio corresponds to lipase inhibitor and hydrogel (or total weight of the preparation) further because of the open-ended comprising language (that is the preparation can have more than the complex between hydrogel and lipase inhibitor). Claims 38 and 39 do not address all the issues noted above.
Note that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Also see, In re Zletz, 13 USPQ2d 1320, 1322. “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
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.
Previously presented rejection of claims 33-39 and 40 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park US 8246985, is maintained for reasons of record.
Applicant’s argument is not persuasive,
because,
Applicant’s Remarks at page 7, points to Park’s disclosures
other than what Examiner pointed out as corresponding to the instant claims.
Applicant is encouraged to address specifically why the following in Park disclosure is irrelevant to the instant claims.
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The argument that Park does not teach the ‘structure of the instantly claimed preparation’ provides for ‘technical effect achieved’ instantly achieved is inconsistent with the broad functional language in the claims for the strt6uctrue (see section under 112-2).
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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.
Previously presented rejection of claims 33, 35-39 and 40 rejected under 35 U.S.C. 103 as being unpatentable over Kawakami, Abstracts of the Annual Congress of Japan Surgical Society, 117:2037 (2017), Kemmochi, Abstracts of the Annual Congress of Japan Surgical Society, 118:2469 (2018) and Gurusamy, Cochrane Database Syst Rev. 2013 Apr 30;2013(4):CD008370, is maintained.
Applicant argues that there is no ‘clear articulated reason’ in the rejection.
According to Applicant the office action failed to establish how one of skill in the art would arrive at the instant limitations. Further Applicant’s last statement at page 8 above the last paragraph, implies that the claimed invention is serendipitous discovery.
That Applicant arrived at the instant combination, interpreted by the Examiner
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incorporating prior art teachings is the basis of the invention. The rejection is not under 35 USC § 102.
Applicant’s arguments are not persuasive,
because
Applicant’s specious Remarks at page 7 onto 8, are drawn to MPEP and case laws,
other than what Examiner discussed in the claims.
Thus a word search for pointed out Kawakami, Kemmochi, Gurusamy teachings relevant to the instant claims is not found in the Applicant’s arguments at page 7 onto 8.
Obviousness can be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988) and In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992). KSR Int. Co. v. Teleflex Inc, 550 U.S. 82 USPQ2d 1385 (2007), instructs courts to take a more “expansive and flexible approach” in determining whether a patented invention was obvious at the time it was made. 550 U.S. at 415. In particular, the Court emphasized the role of “common sense”. “Rigid preventative rules that deny fact finders recourse to common sense … are neither necessary under our case law nor consistent with it.” Id. at 421. See also, Wyers v. Master Lock Co, 95 USPQ2d 1525, (Fed. Cir. 2010).
Applicant also conveniently overlooks, the teachings of DeLong and Bensaid at page 7, perhaps
because
the citations were not in the ‘Rejection Statement’,
but known and available to one of skill in the art used in the obviousness analysis as per 2141 Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 [R-01.2024]
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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 NIZAL S CHANDRAKUMAR whose telephone number is (571)272-6202. The examiner can normally be reached M-F 8-5 EST.
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, Andrew Kosar can be reached at (571) 272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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