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 is a response to Applicant’s communication filed on December 17, 2025. Application No. 18/030,336, is a 371 of PCT/GB2021/052602, filed October 7, 2021, and claims foreign priority to United Kingdom applications Nos. UNITED KINGDOM 2015926.5, filed October 7, 2020; and UNITED KINGDOM 2016220.2, filed October 13, 2020. Claims 1-15 are pending.
Election/Restrictions
Applicant's elections with traverse of the invention of Group I and the cucurbituril species of cucurbit[8]uril in the reply filed on December 17, 2025, are acknowledged. The traversal is on the ground(s) that there would be no serious burden on the Office to examine both the full scope of inventions and species claimed. This is not found persuasive because under the PCT rules for Unity of Invention the Office’s burden is not a consideration. Nonetheless, there would be a serious burden on the Office to examine the full scope of the inventions. The generally claimed cucurbiturils, as well as derivatives thereof, are well known in the art and have other uses than those claimed, raising both search as well as enablement issues.
The requirement is still deemed proper and is therefore made FINAL.
Claim 15 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention. Applicants timely traversed the restriction (election) requirements in the reply filed on December 17, 2025.
Claims 1-14 are examined below.
Claim Rejections - 35 USC § 102(a)(1)
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.
Claims 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Day et al., U.S. 7,501,523. Day discloses a non-therapeutic method for reducing or eliminating the allergic effect of an allergen comprising the step of bringing the allergen into physical contact with an effective amount of a cucurbituril, a derivative thereof, a variant thereof or a mixture thereof. See Day et al., Col. 25, ln. 45 – Col. 26, ln. 37; see Id., specifically, Col. 26, lns. 15-19, for allergens as broadly claimed.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-14 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for a non-therapeutic method of reducing the effect of an allergen comprising the step of bringing the allergen into physical contact with an effective amount of cucurbit[4]uril–cucurbit[12]uril or mixture thereof, the specification does not reasonably provide enablement for a non-therapeutic method for eliminating the allergic effect of an allergen comprising bringing the allergen into physical contact with cucurbiturils (generally), a derivative thereof, a variant thereof, etc. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claims.
Factors to be considered when determining whether claims in an application for patent are enabling include (1) the breadth of the claims, (2) the nature of the invention, (3) the state of the prior art, (4) the level of one of ordinary skill, (5) the level of predictability in the art, (6) the amount of direction provided by the inventor, (7) the existence of working examples, and (8) the quantity of experimentation needed to make or use the invention based on the content of the disclosure. See MPEP § 2164.08, citing In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
The claims are generally drawn to using cucurbiturils generally to reduce or eliminate allergens. However, the specification presents evidence of AqFreshRTM (a known cucurbituril contain product) to a limited effect in reducing some allergens as compared to wiping with water. (See Specification, Figs. 1-3.) The specification provides no other direction as to how cucurbituril, its derivatives or variants can accomplish the same, or eliminate allergens all together. In addition, the prior art fails to provide compensatory guidance. There is therefore no correlation between using AqFreshRTM, eliminating allergens and using any other cucurbiturils variant or derivative to do the same. Accordingly, it would require undue experimentation for the artisan to practice the invention as broadly claimed.
Conclusion
No claims are allowed.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY R ROZOF whose telephone number is (571)270-5992. The examiner can normally be reached on Monday - Friday, 9:00 a.m. -5:00 p.m..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached on (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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/TIMOTHY R ROZOF/
Primary Examiner, Art Unit 1625