DETAILED ACTION
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 .
CONTINUING DATA
FOREIGN APPLICATIONS
CHINA 2022114640370 11/22/2022
Claims 1-17 are pending.
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 10-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (a mental process, which is an abstract idea) without significantly more.
MPEP 2106 outlines the subject matter eligibility test for products and processes. Step 1: Is the claim drawn to a process, machine, manufacture or composition of matter? Yes, the claims are drawn to a method. Step 2A: Is the claim directed to a law of nature, a product of nature, or an abstract idea? Yes, the only claimed step is “selecting a drug,” which is a mental process, an example of an abstract idea. Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No, the claim does not recite any elements besides “selecting.” Thus, the claim is not eligible subject matter under 35 U.S.C. 101.
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 5 and 14 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 5 and 14 recite puerarin “and/or a derivative thereof.” “Derivative thereof” is indefinite because the specification does not provide a definition for “derivative,” so the skilled artisan would not know how different a given molecule can be from puerarin and still be considered a derivative. Figures 8E and 8I illustrate two derivatives, but it is not clear which other derivatives might be encompassed by the claims. It is noted that Table 4 in the current specification recites derivatives 1-01 through 1-10, but only the two derivatives shown in Figures 8E and 8I are actually illustrated.
Claims 5 and 14 recite that the GABAA receptor agonist comprises flumazenil, but flumazenil is not a GABAA receptor agonist; it is an antagonist. There is an apparent contradiction in the claims because the claims require a GABAA receptor agonist but also flumazenil which is not a GABAA receptor agonist.
Claim Rejections - 35 USC § 102
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, 3-8, 10, and 13-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaufman (US 20200030272A1, January 30, 2020).
Kaufman teaches therapeutic or prophylactic treatment of metabolic syndrome using a GABA receptor agonist. See abstract. The GABA agonist is a GABAA agonist such as diazepam, flunitrazepam, or triazolam [0009]. Current claims 10-17 require only “selecting” a drug which encompasses diazepam.
The limitations of claims 1-4, 6-8, 12-13, and 15-17 are inherent properties of diazepam. Wikipedia teaches that benzodiazepines such as diazepam are positive allosteric modulators of GABAA, which increase total conduction of chloride ions across the cell membrane. As a result, arousal of the cortical and limbic systems in the central nervous system is reduced. See page 12, Pharmacokinetics. Diazepam targets Gabra1. See Table 7 of US10950326 and paragraph [0016] of US 20100146645. MPEP 2124 states that references cited to show a universal fact such as characteristics or properties of a material need not be available as prior art.
Claim(s) 1-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN103446139A (2013), machine translation.
CN103446139A teaches treatment of metabolic syndrome using a drug which comprises puerarin. See abstract. The limitations of claims 1-4, 6-8, 10-13, and 15-17 are inherent properties of puerarin. Current claims 10-17 require only “selecting” a drug which encompasses puerarin.
The current specification paragraphs [0025]-[0026] explains that puerarin has an inhibitory effect on neurons in the DMV and puerarin acts on Gabra1. The current specification paragraph [0070] explains that puerarin is a GABAA receptor agonist which promotes opening the chloride channel and inhibits neuronal activity of the DMV. The current specification paragraph [0036] explains that puerarin inhibits the excitability of the DMV. The current specification explains that puerarin promotes opening of the chloride channel [0037].
Claim(s) 1-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang (Anti-obesity Effect of Puerarin on Diet-induced Obese Rats, cited on IDS).
Zhang teaches that puerarin is used to treat obesity. See abstract. Current claims 10-17 require only “selecting” a drug which encompasses puerarin. The limitations of claims 1-4, 6-8, 10-13, and 15-17 are inherent properties of puerarin.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAYLA D BERRY whose telephone number is (571)272-9572. The examiner can normally be reached 7:00-3:00 CST, M-F.
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/LAYLA D BERRY/ Primary Examiner, Art Unit 1693
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