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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1, 2, and 11, and the specie of Pkh201 in the reply filed on 6/23/26 is acknowledged. The traversal is on the ground(s) that Aaron and Ponbejra are directed to a metalloprotease rather than the claimed kinases and transcription factors. This is not found persuasive because as pointed out in the restriction requirement mailed 12/23/25, the shared technical feature is the fungal BBB passage inhibitor, not the kinases or transcription factors required in the screening step.
The requirement is still deemed proper and is therefore made FINAL.
Claims 3-10 and 12-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/23/26.
Claims 1, 2, and 11 are under examination herein.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1 and 2 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.
Regarding claim 1, the claim requires the amount or activity of the protein is down-regulated in stage (b). It is unclear what the down-regulation is relative to. There is not a step in the claimed method about determining the amount or activity of the protein to serve as a baseline or control before the proteins are contacted with the sample and measured.
Claim 2 fail to remedy this deficiency.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 11 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by KR20170077064 (hereafter 64).
Regarding claim 11, 64 teaches a method for screening antifungals using Cryptococcus neoformans (abstract). 64 teaches the method comprises contacting a sample with a range of proteins, measuring an amount or activity of the protein, and determining that the sample is an antifungal agent when the amount or activity of the protein is measured as being down-regulated (claim 1). 64 teaches that the activity level of Pkh201 can be determined (example 8). 64 teaches that this method can be used as a method for screening candidate drug candidates for the treatment and prevention of cryptococcosis or meningitis (p2 7th full paragraph). 64 teaches that proteins can be used in an ELIZA to screen the proteins directly with a sample for the activity of the proteins (p3 4th paragraph).
In regards to the intended use of screening a fungal BBB passage inhibitor, Applicant should note that this is an intended use of the claim. According to MPEP 211.02, to satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (anticipation rejection affirmed based on Board’s factual finding that the reference dispenser (a spout disclosed as useful for purposes such as dispensing oil from an oil can) would be capable of dispensing popcorn in the manner set forth in appellant’s claim 1 (a dispensing top for dispensing popcorn in a specified manner).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TREVOR L KANE whose telephone number is (571)272-0265. The examiner can normally be reached M-F 7:00 am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Louise Humphrey can be reached at 571-272-5543. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TREVOR KANE/Examiner, Art Unit 1657
/ROBERT J YAMASAKI/Primary Examiner, Art Unit 1657
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