Prosecution Insights
Last updated: April 19, 2026
Application No. 18/191,440

METHOD FOR TREATING CEREBRAL APOPLEXY AND HYPERBILIRUBINEMIA BY COMPOUND FOR INHIBITING COMBINATION OF BILIRUBIN AND TRPM2 CHANNEL

Final Rejection §102§103§112
Filed
Mar 28, 2023
Examiner
SZNAIDMAN, MARCOS L
Art Unit
1628
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Shanghai Sixth People'S Hospital
OA Round
2 (Final)
37%
Grant Probability
At Risk
3-4
OA Rounds
3y 3m
To Grant
53%
With Interview

Examiner Intelligence

Grants only 37% of cases
37%
Career Allow Rate
461 granted / 1253 resolved
-23.2% vs TC avg
Strong +16% interview lift
Without
With
+16.1%
Interview Lift
resolved cases with interview
Typical timeline
3y 3m
Avg Prosecution
56 currently pending
Career history
1309
Total Applications
across all art units

Statute-Specific Performance

§101
1.8%
-38.2% vs TC avg
§103
38.8%
-1.2% vs TC avg
§102
17.2%
-22.8% vs TC avg
§112
26.7%
-13.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1253 resolved cases

Office Action

§102 §103 §112
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 January 13, 2026. Status of Claims Amendment of claim 1 is acknowledged. Claims 1-10 are currently pending and are the subject of this office action. Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 12, 2025. Claims 1-6 are presently under examination. Priority The present application claims priority to foreign application CHINA CN2022211237436.3 filed on 10/10/2022. Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English application. 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and Response to Arguments Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 § 112 (New Rejection Necessitated by Amendment) 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 1-6 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. Claim 1 recites: “A method for treating bilirubin as an extracellular endogenous agonist that directly combines with TRPM2 channel to aggravate brain caused by cerebral apoplexy”. How can you treat bilirubin? Bilirubin is not a disease but a small molecule. Who are the patients in need for “treating bilirubin”? The metes and bounds of the instant claims are not clearly defined. For prior art search, the claims are going to be interpreted: 1- “as a method of treating cerebral apoplexy in a subject in need thereof, wherein bilirubin directly combines with TRPM2 channel to aggravate brain damage”, and 2- “as a method of treating cerebral apoplexy and hyperbilirubinemia”. Claim Rejections - 35 USC § 102/103 (Modified 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) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Zhang et. al. (J. Med. Chem (March 30, 2021) 64:3976-3996) as evidenced by Ghojazadeh et. al. (Arch. Neurosci. (April 2020) 7: e99302, pages 1-8). NOTE: for this rejection the interpretation of “A method for treating bilirubin as an extracellular endogenous agonist that directly combines with TRPM2 channel to aggravate brain caused by cerebral apoplexy” is: 1- “a method of treating cerebral apoplexy in a subject in need thereof, wherein bilirubin directly combines with TRPM2 channel to aggravate brain damage” (see 112 (b) above) For claim 1, Zhang teaches a method of treating stroke (i.e. cerebral apoplexy) comprising the administration of the TRPM2 channel inhibitor A23: PNG media_image1.png 430 468 media_image1.png Greyscale (see abstract; page 3977, left column, first sentence; page 3977, right column, last paragraph; page 3978, scheme 1, compound A23; page 3978, left column, last paragraph before Results and Discussion; page 3896, right column, first sentence of second paragraph; and page 3897, left column, last sentence of second paragraph). The prior art does not teach that the compound A23 is a “reagent for competitively inhibiting or blocking combination of bilirubin and the TRPM2 channel”. However, “competitively inhibiting or blocking combination of bilirubin and the TRPM2 channel” is an inherent property of the compound A23 as evidenced by the instant specification (see for example paragraph [0005]). 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 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." The prior art is silent regarding “bilirubin directly combines with TRPM2 channel to aggravate brain damage”. However: “bilirubin directly combines with TRPM2 channel to aggravate brain damage” will inevitably flow from the teachings of Zhang, since the same compound (A23) is being administered to the same subjects (patients suffering from stroke (that have high bilirubin as evidenced by Ghojazadeh. Ghojazadeh teaches that “there was an association between the increased serum level of bilirubin and increased severity of ischemic stroke” (see abstract; see page 3, left column, first paragraph under 5. Discussion; and see page 3, right column, second paragraph). In other words, products of identical composition cannot exert mutually exclusive properties when administered under the same circumstances. In other words, even though the prior art is silent regarding “bilirubin directly combines with TRPM2 channel to aggravate brain damage”, by practicing the method of Zhang: “the administration of a composition comprising A23 to patients suffering from stroke (that have high bilirubin as evidenced by Ghojazadeh)", one will also be “aggravating brain damage when bilirubin directly combines with TRPM2 channel”, even though the prior art was not aware of it. Apparently, Applicant has discovered a new property or advantage ("bilirubin directly combines with TRPM2 channel to aggravate brain damage”) of the method disclosed by Zhang (“the administration of a composition comprising A23 to patients suffering from stroke (that have high bilirubin as evidenced by Ghojazadeh)". MPEP 2112 I states: “[T]he 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).” The prior art is silent regarding the statement of claim 2 and its dependent claims 4-6: “wherein K928 and/or D1069 mutation eliminates channel activating effect of bilirubin and its derivatives”. However, the above statement does not add any structural limitation to the claim and simply expresses a mechanism of action: “when there is a K928 and/or D1069 mutation in the TRPM2 channel, bilirubin can no longer activate the TRPM2 channel” Apparently, Applicant has discovered a new mechanism of action (a K928 or D1069 mutation in the TRPM2 channel eliminates channel activating effect of bilirubin and its derivatives) of a known invention (the administration of a composition comprising A23 to patients suffering from stroke (that have high bilirubin)). The explanation of an effect or mechanism of action obtained when using a compound (e.g. a K928 or D1069 mutation in the TRPM2 channel eliminates channel activating effect of bilirubin and its derivatives) cannot confer novelty on a known process (the administration of a composition comprising A23 to patients suffering from stroke (that have high bilirubin)) if the skilled artisan was already aware of the occurrence of the desired therapeutic effect. Though new properties of a compound or their mechanism of action are no doubt important contributions to scientific and pharmaceutical development, the assessment of patentability is based upon the therapeutic applications and effects of the compounds, not the mechanism or properties by which they exert such a therapeutic effect. MPEP 2145 states: “Mere recognition of latent properties in the prior art does not render non-obvious an otherwise known invention. In re Wiseman, 201 USPQ 658 (CCPA 1979). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991)”. The prior art is silent regarding the statement of claim 3: “wherein the compound or reagent (A23) is competitively combined with the K928 and/or D1069 residue(s) of TRPM2 channel” However, the above statement does not require additional steps to be performed and simply expresses the intended result of carrying the process anticipated by the prior art: “the administration of a composition comprising A23 to patients suffering from stroke (that have high bilirubin)". MPEP 2111.04 states: “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are: (A) “ adapted to ” or “adapted for ” clauses; (B) “ wherein ” clauses; and (C) “ whereby ” clauses. The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case. In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), the court held that when a “whereby’ clause states a condition that is material to patentability; it cannot be ignored in order to change the substance of the invention.” Id. However, the court noted (quoting Minton v. Nat ’l Ass ’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) that a “whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” (Emphasis added). In the instant case: “the compound or reagent (A23) is competitively combined with the K928 and/or D1069 residue(s) of TRPM2 channel” appears to be the result of the process anticipated by the prior art: ““the administration of a composition comprising A23 to patients suffering from stroke (that have high bilirubin)", e. g. the intended result of a process step positively recited. As such, this limitation in the instantly claimed method has not been given any weight. Claim Rejections - 35 USC § 103 (Modified 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 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, 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. The factual inquiries 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. 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. Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et. al. (J. Med. Chem (March 30, 2021) 64:3976-3996) in view of Ghojazadeh et. al. (Arch. Neurosci. (April 2020) 7: e99302, pages 1-8). NOTE: for this rejection the interpretation of “A method for treating bilirubin as an extracellular endogenous agonist that directly combines with TRPM2 channel to aggravate brain caused by cerebral apoplexy” is: 2- a method of treating cerebral apoplexy and hyperbilirubinemia (see 112(b) above). For claim 1, Zhang teaches a method of treating stroke (i.e. cerebral apoplexy) comprising the administration of the TRPM2 channel inhibitor A23: PNG media_image1.png 430 468 media_image1.png Greyscale (see abstract; page 3977, left column, first sentence; page 3977, right column, last paragraph; page 3978, scheme 1, compound A23; page 3978, left column, last paragraph before Results and Discussion; page 3896, right column, first sentence of second paragraph; and page 3897, left column, last sentence of second paragraph). The prior art does not teach that the compound A23 is a “reagent for competitively inhibiting or blocking combination of bilirubin and the TRPM2 channel”. However, “competitively inhibiting or blocking combination of bilirubin and the TRPM2 channel” is an inherent property of the compound A23 as evidenced by the instant specification (see for example paragraph [0005]). 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 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." The prior art does not teach the treatment of hyperbilirubinemia (increased levels of bilirubin). However, Ghojazadeh teaches that “there was an association between the increased serum level of bilirubin and increased severity of ischemic stroke” (see abstract; see page 3, left column, first paragraph under 5. Discussion; and see page 3, right column, second paragraph). Since Zhang teaches that stroke patients can be treated with the administration of a composition comprising the TRPM2 channel inhibitor A23, and since the prior art (Ghojazadeh) further teaches that most stroke patients suffer from hyperbilirubinemia, before the effective filing date of the application, it will be prima facie obvious for the skilled in the art to be further motivated to treat stroke in this particular subgroup of patients (stroke patients suffering from high concentration of bilirubin) with the TRPM2 channel inhibitor A23 with an expectation of success, since it is expected that this subgroup of stroke patients (suffering from high concentration of bilirubin) will also benefit from the treatment that is known to be effective to the larger group of stroke patients in general. The prior art is silent regarding “treating hyperbilirubinemia”. However: “treating hyperbilirubinemia” will naturally flow from the teachings (or method made obvious by) the prior art (see above rejection), since the same compound (A23) is being administered to the same subjects (patients suffering from stroke that have high bilirubin). In other words, products of identical composition cannot exert mutually exclusive properties when administered under the same or similar circumstances. In other words, even though the prior art is silent regarding “treating hyperbilirubinemia”, by practicing the method made obvious by the prior art: “the administration of a composition comprising A23 to patients suffering from stroke, that have high bilirubin", one will also be “treating hyperbilirubinemia”, even though the prior art was not aware of it. Apparently, Applicant has discovered a new property or advantage ("treating hyperbilirubinemia”) of the method made obvious by the prior art (“the administration of a composition comprising A23 to patients suffering from stroke, that have high bilirubin)". MPEP 2145 II states: “The fact that Applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art, cannot be the basis for patentability when the differences would otherwise be obvious”. Ex parte Obiaya, 227 USPQ 58, 60. (FP 7.37.07, MPEP 707.07(f)). All this will result in the practice of claim 1 with a reasonable expectation of success. The prior art is silent regarding the statement of claim 2 and its dependent claims 4-6: “wherein K928 and/or D1069 mutation eliminates channel activating effect of bilirubin and its derivatives”. However, the above statement does not add any structural limitation to the claim and simply expresses a mechanism of action: “when there is a K928 and/or D1069 mutation in the TRPM2 channel, bilirubin can no longer activate the TRPM2 channel” Apparently, Applicant has discovered a new mechanism of action (a K928 or D1069 mutation in the TRPM2 channel eliminates channel activating effect of bilirubin and its derivatives) of an obvious invention (the administration of a composition comprising A23 to patients suffering from stroke, that have high bilirubin). The explanation of an effect or mechanism of action obtained when using a compound (e.g. a K928 or D1069 mutation in the TRPM2 channel eliminates channel activating effect of bilirubin and its derivatives) cannot confer novelty on an obvious process (the administration of a composition comprising A23 to patients suffering from stroke, that have high bilirubin) if the skilled artisan was already aware of the occurrence of the desired therapeutic effect. Though new properties of a compound or their mechanism of action are no doubt important contributions to scientific and pharmaceutical development, the assessment of patentability is based upon the therapeutic applications and effects of the compounds, not the mechanism or properties by which they exert such a therapeutic effect. MPEP 2145 states: “Mere recognition of latent properties in the prior art does not render non-obvious an otherwise known invention. In re Wiseman, 201 USPQ 658 (CCPA 1979). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991)”. All this will result in the practice of claims 2 and 4-6 with a reasonable expectation of success. The prior art is silent regarding the statement of claim 3: “wherein the compound or reagent (A23) is competitively combined with the K928 and/or D1069 residue(s) of TRPM2 channel” However, the above statement does not require additional steps to be performed and simply expresses the intended result of carrying the process made obvious by the prior art: “the administration of a composition comprising A23 to patients suffering from stroke that have high bilirubin". MPEP 2111.04 states: “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. However, examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are: (A) “ adapted to ” or “adapted for ” clauses; (B) “ wherein ” clauses; and (C) “ whereby ” clauses. The determination of whether each of these clauses is a limitation in a claim depends on the specific facts of the case. In Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), the court held that when a “whereby’ clause states a condition that is material to patentability; it cannot be ignored in order to change the substance of the invention.” Id. However, the court noted (quoting Minton v. Nat ’l Ass ’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)) that a “whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” (Emphasis added). In the instant case: “the compound or reagent (A23) is competitively combined with the K928 and/or D1069 residue(s) of TRPM2 channel” appears to be the result of the process made obvious by the prior art: ““the administration of a composition comprising A23 to patients suffering from stroke, that have high bilirubin", e. g. the intended result of a process step positively recited. As such, this limitation in the instantly claimed method has not been given any weight. All this will result in the practice of claim 3 with a reasonable expectation of success. Response to Applicant’s arguments related to the above rejection Applicant's arguments have been fully considered but are not persuasive. Since a new rejection was issued (see above), only those arguments presented by Applicant that are relevant to the new rejection are being considered. Examiner’s response: First, Zhang does not have to teach that that bilirubin is a direct extracellular agonist of TRPM2 channel, since this is an inherent property of bilirubin, even though Zhang was not aware of it. 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).” Zhang does not have to teach a mechanism wherein bilirubin activates TRPM2 channel by binding to the K928/D1069 sites, since this mechanism already happened when Zhang treated stroke patients (which have high bilirubin) comprising the administration of compound A23 (same structural requirements as the instant claims), even though Zhang was not aware of it. Apparently, Applicant has discovered a new mechanism of action (“bilirubin activates TRPM2 channel by binding to the K928/D1069 sites) of a known process (the administration of A23 to patients suffering from stroke). Though new properties of a compound or their mechanism of action are no doubt important contributions to scientific and pharmaceutical development, the assessment of patentability is based upon the therapeutic applications and effects of the compounds, not the mechanism or properties by which they exert such a therapeutic effect. MPEP 2145 states: “Mere recognition of latent properties in the prior art does not render non-obvious an otherwise known invention. In re Wiseman, 201 USPQ 658 (CCPA 1979). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991)”. As long as the structural limitations of the instant claims are the same or similar to the prior art (Zhang) all the functional limitations will also be the same. Conclusion No claims are allowed. Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p) on 05/10/10 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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 mailing 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MARCOS L SZNAIDMAN/ Primary Examiner, Art Unit 1628 January 14, 2026.
Read full office action

Prosecution Timeline

Mar 28, 2023
Application Filed
Dec 03, 2025
Non-Final Rejection — §102, §103, §112
Jan 13, 2026
Response Filed
Feb 05, 2026
Final Rejection — §102, §103, §112 (current)

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Prosecution Projections

3-4
Expected OA Rounds
37%
Grant Probability
53%
With Interview (+16.1%)
3y 3m
Median Time to Grant
Moderate
PTA Risk
Based on 1253 resolved cases by this examiner. Grant probability derived from career allow rate.

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