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
Status of claims
The amendment filed on March 2, 2026 is acknowledged. Claims 1 and 3-11 have been canceled and new claims 13-14 have been added. Claims 2 and 12-14 are under examination in the instant office action.
Applicants' arguments, filed on March 2, 2026, have been fully considered but they are moot in view of new grounds of rejection which are necessitated by the amendments (e.g., deleting the rejected compound of chemical formula 3 in claims 2 and 12 and adding new claims 13-14). Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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)(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 2 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Umre et al. (Future Journal of Pharmaceutical Sciences, 4 (2): 248-253, 12/2/2018).
Umre et al. teach a composition comprising ferulic acid (4-hydroxy-3-methoxy cinnamic acid;
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), which inhibits gastric H+-K+ATPase enzyme and has anti-ulcer activity and disclos administering the composition to rats for inhibiting gastric ulcer (abstract, p248, col 1, para 2, p249, Section 2.6, 2.6.1., and 2.6.2. and Fig. 6). Ferulic acid is the same as the claimed compound of Chemical formula 1, thus the composition comprising ferulic acid for administration to animals, which inhibits and treat gastric ulcer, reads on a pharmaceutical composition comprising the compound of Chemical formula 1 as claimed.
As such, the instant claim 1 is anticipated by Umre et al.
Claims 2 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 20050023998 (cited in the IDS filed on 5/29/2024; English translation attached and cited).
KR 20050023998 teach a pharmaceutical composition comprising a gastric acid secretion inhibitor such as ferulic acid (4-hydroxy-3-methoxyphenyl-2-propenoic acid;
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) for treating pectic ulcer (abstract, p2, Table 1, Compound #8 and claim 1-3). Ferulic acid is the same as the claimed compound of Chemical formula 1.
KR 20050023998 further teach that the composition comprises one, two or more of the gastric acid secretion inhibitors and may further include a pharmacologically acceptable carrier (p5, para 3).
Also, KR 20050023998 teach that the gastric acid secretion inhibiting composition can be used as food, food additives or drugs (p5, para 4).
As such, the instant claims 1 and 12 are anticipated by KR 20050023998.
Claim Rejections - 35 USC § 103
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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Umre et al. (Future Journal of Pharmaceutical Sciences, 4 (2): 248-253, 12/2/2018).
Umre et al. as applied supra is herein applied for the same teachings in their entirety.
Umre et al. does not specifically disclose a food composition comprising ferulic acid.
However, it was known in the art that ferulic acid (4-hydroxy-3-methoxy cinnamic acid), a phenolic compound, is extensively found in plants as evidenced by Umre et al. (p248, col 1, para 2).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare ferulic acid in a food composition for preventing or treating gastritis or peptic ulcer because ferulic acid is a natural product isolated from plants, thus the skilled artisan would have been recognized that it could be used as food or food additive having anti-ulcer activity. The skilled artisan would have been motivated to do so on the reasonable expectation that the resulting food composition comprising the natural anti-ulcer compound such as ferulic acid would be useful for treating gastric ulcer.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the forgoing discussion, it is concluded that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the reference, it is 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 before the effective filing date of the claimed invention, as evidenced by the reference, especially in the absence of evidence to the contrary.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Umre et al. (Future Journal of Pharmaceutical Sciences, 4 (2): 248-253, 12/2/2018) in view of Tanaka et al. (Planta Medica 55: 245-248, 1989; cited in the IDS filed on 5/7/2024).
Umre et al. as applied supra is herein applied for the same teachings in their entirety.
Umre et al. does not specifically disclose the composition of ferulic acid further comprises 3-(2-hydroxyphenyl)-propanoic acid (
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; chemical formula 3).
Tanaka et al. teach 3-(2-hydroxyphenyl)-propanoic acid (
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; Compound 1), which was isolated from Chinese cinnamon (Cinnamomum cassia) and its inhibitory effects on gastric ulcers (abstract). The Compound 1 is the same as the claimed compound represented by formula 3. Tanaka et al. discloses that test compounds including the Compound 1 (3-(2-hydroxyphenyl)-propanoic acid) are dissolved in physiological saline for intraperitoneal or oral administration to animals, wherein the Compound 1 inhibited ulcerogenesis (p245, col 2, para 4 and p246, Col 2, para 3-4, and Fig 1).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use ferulic acid in combination with the Compound 1 of Tanaka et al. for preventing or treating gastritis or peptic ulcer because both compounds are taught to have anti-ulcer activity, and thus useful for treating gastric ulcer. According to M.P.E.P. § 2144.06, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). In this case, one would be motivated to combine ferulic acid and the Compound 1 of Tanaka et al. based on their independent efficacy in inhibiting gastric ulcer. One would have a reasonable expectation of success, as noted above, that two independently successful treatments would be similarly successful when combined.
Claims 2 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over KR 20050023998 (cited in the IDS filed on 5/29/2024; English translation attached and cited) in view of Tanaka et al. (Planta Medica 55: 245-248, 1989; cited in the IDS filed on 5/7/2024).
KR 20050023998 as applied supra is herein applied for the same teachings in their entirety.
KR 20050023998 does not specifically disclose that the composition of ferulic acid further comprises 3-(2-hydroxyphenyl)-propanoic acid (
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; chemical formula 3).
Tanaka et al. teach 3-(2-hydroxyphenyl)-propanoic acid (
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; Compound 1), which was isolated from Chinese cinnamon (Cinnamomum cassia) and its inhibitory effects on gastric ulcers (abstract). The Compound 1 is the same as the claimed compound represented by formula 3. Tanaka et al. discloses that test compounds including the Compound 1 (3-(2-hydroxyphenyl)-propanoic acid) are dissolved in physiological saline for intraperitoneal or oral administration to animals, wherein the Compound 1 inhibited ulcerogenesis (p245, col 2, para 4 and p246, Col 2, para 3-4, and Fig 1).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use ferulic acid in combination with the Compound 1 of Tanaka et al. for preventing or treating gastritis or peptic ulcer because both compounds are taught to be have anti-ulcer activity, and thus useful for treating gastric ulcer. Also, KR 20050023998 teach and suggest the combination of one or more agents which effectively inhibit activity of proton pump to inhibit secretion of gastric acid (abstract and claim 1). According to M.P.E.P. § 2144.06, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). In this case, one would be motivated to combine ferulic acid and the Compound 1 of Tanaka et al. based on their independent efficacy in inhibiting gastric ulcer. One would have a reasonable expectation of success, as noted above, that two independently successful treatments would be similarly successful when combined.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BONG-SOOK BAEK whose telephone number is 571-270-5863. The examiner can normally be reached 9:00AM-6:00PM Monday-Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/BONG-SOOK BAEK/Primary Examiner, Art Unit 1611
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