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
This office action is in response to applicant’s reply filed on April 6, 2026.
Status of Claims
Amendment of claims 1, 9-10, 14, and addition of claims 35-39 is acknowledged.
Claims 1, 3-10, 14-17, 22, 24-29 and 35-39 are currently pending and are the subject of this office action.
Claim 15-17, 22 and 24-29 were withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim.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 August 15, 2025.
Claim 10 is further withdrawn since no longer encompasses the previously elected species phenylglycine analog.
New claims 36-39 are further withdrawn since they do not encompass the elected species ibuprofen as the DD-serine transport modulator.
Claims 1, 3-6, 8-9, 14 and 35 are presently under examination.
The following species are under examination:
Ibuprofen as the D-serine transport modulator, and
Priority
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Rejections and/or Objections and Response to Arguments
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated (Maintained Rejections and/or Objections) or newly applied (New Rejections and/or Objections, Necessitated by Amendment or New Rejections and/or Objections not Necessitated by Amendment). They constitute the complete set presently being applied to the instant application.
Responses to Applicant’s arguments have been addressed immediately after the corresponding rejections, or in the section: Withdrawn Rejections and/or Objections, if the rejection was withdrawn.
Claim Rejections - 35 USC § 102 (New Rejection Necessitated by Amendment).
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.
Claim(s) 1, 3-6, 8-9, 14 and 35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Darko (US 6,342,530).
For claims 1,3-6, 8-9, 14 and 35, Darko teaches treating pain and inflammation in patients suffering from kidney disease comprising the administration of a composition comprising ibuprofen (see column 1 under field of invention; see column 2, lines 56-64; and claims 1, 5 and 15), wherein the kidney disease can be nephritis, nephrosis, cancer of the kidney or kidney failure (see column 2, lines 63-64) all of which are not kidney diseases resulting from benign prostatic hyperplasia.
The prior art is silent regarding:
“The D-serine transport modulator (i.e. ibuprofen) modulates intracellular and extracellular D-serine transport by a D-serine transport protein, wherein the D-serine transport protein comprises one or more selected from a first group of D-serine transport proteins consisting of SMCT family, GLUT5, CAT1, THTR2 and SNAT2” as in claim 1, and “wherein the D-serine transport protein further comprises one or more selected from a second group of D-serine transport proteins consisting of ASCT family, Asc1, PAT1 and ATB” as in claim 3.
The prior art is also silent regarding the following statements:
“wherein the D-serine transport modulator (i.e. ibuprofen) modulates a D-serine level in a cell, in a tissue, in an organ, or in body fluid” as in claim 4.
”wherein the D-serine transport modulator (i.e. ibuprofen) modulates a D-serine level in blood and/or in urine” as in claim 5,
“wherein the D-serine transport modulator (i.e. ibuprofen) inhibits D-serine transport into a cell by acting on the D-serine transport protein” as in claim 6, and
“wherein the D-serine transport modulator (i.e. ibuprofen) is a substrate or inhibitor of the D-serine transport protein” as in claim 8.
However, it seems like the above statements describe an inherent property of ibuprofen as evidenced by the specification (see for example Figure 13, Figure 14 and paragraph [0036]). Apparently, Applicant discovered a new and previously unknown property of ibuprofen.
MPEP 2112 I states:
“The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).”
MPEP 2112.01 I recites:
“Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
MPEP 2112.01 II states:
"Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. (Applicant argued that the claimed composition was a pressure sensitive adhesive containing a tacky polymer while the product of the reference was hard and abrasion resistant. "The Board correctly found that the virtual identity of monomers and procedures sufficed to support a prima facie case of unpatentability of Spada’s polymer latexes for lack of novelty."
Conclusion
No claims are allowed.
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 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 date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCOS L SZNAIDMAN whose telephone number is (571)270-3498. The examiner can normally be reached Flexing M-F 7 AM-7 PM.
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, Amy L. Clark can be reached on 571 272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCOS L SZNAIDMAN/
Primary Examiner, Art Unit 1628
April 29, 2026.
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