DETAILED ACTION
Status of Application
Claims 10-19 (first) and 19(second)- 29 are pending.
Claims 10-19 (first) and 19(second)- 29 are present for examination at this time.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claims 19 (first) and 19(second) are objected to because of the following informalities: There are two claims numbered as claim 19 which is incorrect. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 10-19 (first) and 19(second)- 29 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claims do not fall within at least one of the four categories of patent eligible subject matter because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101.
It does not address if it is to a process, machine, manufacture, or composition of matter (the four categories of patent eligible subject matter). See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966). See MPEP 2173.05(q).
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 10-19 (first) and 19(second)- 29 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.
Claims 10-19 (first) and 19(second)- 23 provides for the use of a sympathetic activation inhibitor and/or an al-adrenergic receptor inhibitor in preparing a medicine for treating or relieving dry eye syndrome and dependent claims recite various dosage forms, and claims 24-29 provides for the use of a sympathetic activation inhibitor and/or an o.1-adrenergic receptor inhibitor in preparing a medicine for increasing tear secretion and/or reduce inflammation of a lacrimal gland and an ocular surface; but the claims does not set forth any recitations if it is for a composition with intended use or any steps involved for which method of treating or process of manufacture, it is unclear what method or process or composition of matter applicant is intending to encompass as it also recites both a use for preparing with a use for treating which are two different processes or if a composition with an intended use as it is unclear what statutory category the claims are directed to. See MPEP 2173.05(q). A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. It does not allow one to ascertain the metes and bounds of the clams as written and cannot be further treated for prior art examination pending Applicant’s amendment to define which statutory category the claims are directed to with the requisite limitations.
Conclusion
Claims 10-19 (first) and 19(second)- 29 are rejected.
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/GIGI G HUANG/Primary Examiner, Art Unit 1613