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
Filing Receipt and Priority
The filing receipt mailed 08/16/2023 states that the instant application does not claim benefit of any prior filed domestic applications.
Information Disclosure Statement
As of this action, no information disclosure statement (IDS) has been submitted.
Claim Objections
Claim 3 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim. Claim 3 states “Use of the compound according to the patent claim 1 and claim 2”. See MPEP § 608.01(n).
For the purpose of this action, the claim is being treated as if dependent from claim 2.
Rejections
Claim Rejections - 35 USC § 101
Use Claim
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 2-3 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter. Claim 2 states “Use of the compound, according to the patent claim 1,…”
Claim 3 states “Use of the compound according to the patent claim 1 and claim 2…”.
Claim Rejections - 35 USC § 112(b)
Use Claim
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 2-3 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.
Regarding the rejections above, the MPEP in section 2173.05(q), subsection I states “It is appropriate to reject a claim that recites a use but fails to recite steps under 35 U.S.C. 101 and 35 U.S.C. 112(b) if the facts support both rejections.”
A “use” is not a statutory class. Therefore rejection under 35 U.S.C. 101 is proper.
Additionally, claims 2 and 3 do not recite a functional step. Therefore, rejection under 35 U.S.C. is also proper.
For the purpose of this action, the claims are being interpreted as if the claims are drawn method of treating claims.
Indefiniteness
Claim 1 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 states “A compound manufactured with the procedure of synthesis of bouncing Thymol and Carvacrol into one solid and stabile compound…”.
Within the chemical arts, “bouncing” is not a known synthetic technique. The instant specification is silent to the specific steps or methods involved in “bouncing”. Therefore, the claim is indefinite because of its use of “bouncing” which is not defined or explained. One of ordinary skill in the art would not know the metes of bounds of the claims from what is provided in the claim and in the specification.
Claim 1 is 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 states “A compound…”as shown in paragraph 0009”.
The MPEP section 2173.05(s) states “Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table ‘is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claims. Incorporation by reference is a necessity doctrine, not or applicant’s convenience.’ [citations omitted]”.
Additionally, the specification may be modified or changed. Therefore, reference to a specific paragraph within the specification is indefinite.
Claims 2-3 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 2-3 contain “/”. This is indefinite because one of ordinary skill would not know from the claim language whether the claim is drawn to one or the other or both. It is not clear whether the claim is meant to state “active compound or potent entero-antiseptic” or “active compound and potent entero-antiseptic”.
The examiner recommends amending to state “and”, ”or” or “and/or”.
Art Rejections
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Ninkov (EP 3991725 A1, published 04/05/2022, date of filing 02/11/2020).
Ninkov on p. 4 discloses a compound of Formula I shown below.
Formula I
Ninkov on p. 2, para. [0002] states “In particular, this invention is completely novel because Thymol and Carvacrol, by the special process of synthesis have been bounced into one stabile compound.”
Ninkov in the same paragraph states “The compound is created to fight antibiotic resistance of pathogenic bacteria, such as E. coli, Salmonella, Campylobacter, Shigella, Vibrio, Yersinia, Listeria and other bacteria…”.
Ninkov in its abstract (p. 1) states “Additionally, [the compound’s] second formulation, with the coated cellulose, is used as an active compound/potent entero-antiseptic for the treatment of chronic intestinal infections: Chron’s Disease (inflammatory bowel disease – IBD).”
Pertinent Art
Kachur (Critical reviews in Food Science and Nutrition, 2020, vol. 60, No. 18, 3042-3053) discusses the antibacterial properties of thymol and carvacrol.
Mahboubi (Journal of Dietary Supplements, Vol. 16, 2019, Iss. 1, only abstract provided) discusses the use of Z. multiflora essential oils, which includes thymol and carvacrol, in treatment for IBD.
Conclusion
No claims allowed.
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/L.G./Examiner, Art Unit 1624
/SUSANNA MOORE/Primary Examiner, Art Unit 1624