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 .
DETAILED ACTION
1. Applicant's amendment, filed 03/03/26 is acknowledged.
2. Claims 1-4,6-8,15,25,42-44, 46-51 are pending.
Claims 1-4,6-8,15,25,42-44, 46-51 read on a method for regulating activity of poxvirus viral polymerase in a cell infected with the poxvirus are under consideration in the instant application.
The following new ground of rejection is necessitated by the amendment filed on 03/03/26.
3. Claim 6 is objected to as being dependent on canceled claim 5
Appropriate correction is required.
4. 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.
5. Claims 1-4, 6-8,15,25,42-44, 46-51 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application 20140343114 in view of newly cited US Patent Application 20180049984 and US Patent Application 20110027273.
Applicant’s arguments filed on 03/03/26 have been fully considered but have not been found convincing. Applicant asserts that the amended claims now recited that viral polymerase is a virus-encoded RNA polymerase. US Patent Application’114 does not teach inhibiting virus-encoded RNA polymerase.
Newly cited US Patent Application ‘273 teaches a method of using anti-viral compound that inhibits virus-encoded RNA polymerase for immunotherapy ( see entire document , paragraphs 0188 and 0189 in particular).
Newly cited US Patent Application ‘984 273 teaches a method of using anti-viral compound that inhibits virus-encoded RNA polymerase in poxviruses for immunotherapy ( see entire document paragraphs 0394 in particular).
US Patent Application’114 teaches a method of treating a subject infected with poxvirus, comprising administering a compound that reduce or inhibit activity of viral polymerase. US Patent Application’114 teaches that said compound comprises a small molecule or polypeptide ( see entire document, paragraphs 0012, 0016, 0022, 0129, 0176 in particular).
All the claimed elements were known in the prior art and one skill in the art could have combine the elements as claimed by known methods with no change in their respective function and the combination would have yield predictable results to one of ordinary skill in the art at the time of the invention ( see KSR International Co v Teleflex Inc., 550U.S.-, 82 USPQ2d 1385, 2007).
Thus it would have been to one of ordinary skill in the art before the effective filing date of the claimed invention to use compounds that inhibits virus-encoded RNA polymerase in the method taught by US Patent Application ‘114 with a reasonable expectation of success because the prior art suggests anti-viral compound that inhibits virus-encoded RNA polymerase can be used for a method of treating cells infected with poxvirus.
It would be immediately obvious to one skill in the art before the effective filing date of the claimed invention that administered compound would contact the cell infected with the virus.
From the teachings of the references, it was apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
6. Claims 1, 15 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application 20140343114 in view of newly cited US Patent Application 20180049984 and US Patent Application 20110027273 as applied for claims 1-8, 25, 42- 44 above and further in view of Fontaine et al.( J of Virol., 2014, v.88 pages 4366-4374)
The teaching of US Patent Applications 20140343114, 20180049984 and 20110027273 have been discussed supra.
US Patent Applications US Patent Applications 20140343114, 20180049984 and 20110027273 do not explicitly teaches the use of glutamine.
Fontaine et al., teaches a method of treating poxvirus infection comprising contacting cells infected with poxvirus with glutamine ( see entire document, page 4368 in particular).
All the claimed elements were known in the prior art and one skill in the art could have combine the elements as claimed by known methods with no change in their respective function and the combination would have yield predictable results to one of ordinary skill in the art at the time of the invention ( see KSR International Co v Teleflex Inc., 550U.S.-, 82 USPQ2d 1385, 2007).
Thus it would have been to one of ordinary skill in the art before the effective filing date of the claimed invention to use glutamine in the method taught by US Patent Application ‘114 with a reasonable expectation of success because the prior art suggests that glutamine can be used for a method of treating cells infected with poxvirus.
From the teachings of the references, it was apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
7. Claims 1, 46-51 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application 20140343114 in view of newly cited US Patent Application 20180049984 and US Patent Application 20110027273 as applied for claims 1-8, 25, 42- 44 above and further in view of US Patent Application 20100048682
The teaching of US Patent Applications 20140343114, 20180049984 and 20110027273 have been discussed supra.
US Patent Applications 20140343114, 20180049984 and 20110027273 does not explicitly teaches the use of bis-5 alkylresorcinol 14:1
US Patent Application’682 teaches the use of bis-5 alkylresorcinol to inhibit the activity of DNA polymerase in the infected cells ( see entire document, paragraphs 0030,0032, 0049 in particular)
All the claimed elements were known in the prior art and one skill in the art could have combine the elements as claimed by known methods with no change in their respective function and the combination would have yield predictable results to one of ordinary skill in the art at the time of the invention ( see KSR International Co v Teleflex Inc., 550U.S.-, 82 USPQ2d 1385, 2007).
Thus it would have been to one of ordinary skill in the art before the effective filing date of the claimed invention to use bis-5 alkylresorcinol 14:1 in the method taught by US Patent Application ‘114 with a reasonable expectation of success because the prior art suggests that bis-5 alkylresorcinol 14:1 can be used for inhibiting the activity of DNA polymerase in the infected cells.
Claims 47-51 are included because it would be conventional and within the skill of the art to : (i) determine an optimal structure of bis-5 alkylresorcinol to be used Further, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F2d 454,456,105 USPQ 233; 235 (CCPA 1955). see MPEP § 2144.05 part II A.
It is well settled that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). See also Merck & Co. v. Biocraft Labs. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1847-48 (Fed. Cir. 1989) (determination of suitable dosage amounts in diuretic compositions considered a matter of routine experimentation and therefore obvious).
From the teachings of the references, it was apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
8. No claim is allowed.
9. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609(B)(2)(i). 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 extension fee 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.
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michail Belyavskyi whose telephone number is 571/272-0840. The examiner can normally be reached Monday through Friday from 9:00 AM to 5:30 PM. A message may be left on the examiner's voice mail service. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Gregory Emch can be reached on 571/ 272-8149
The fax number for the organization where this application or proceeding is assigned is 571/273-8300
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/MICHAIL A BELYAVSKYI/Primary Examiner, Art Unit 1644