Prosecution Insights
Last updated: April 19, 2026
Application No. 18/215,176

Application of Valdecoxib in preparation of medications for preventing and treating glaucoma

Non-Final OA §102§112
Filed
Jun 28, 2023
Examiner
BETIT, JACOB F
Art Unit
Tech Center
Assignee
Central South University
OA Round
1 (Non-Final)
35%
Grant Probability
At Risk
1-2
OA Rounds
4y 11m
To Grant
51%
With Interview

Examiner Intelligence

Grants only 35% of cases
35%
Career Allow Rate
53 granted / 151 resolved
-24.9% vs TC avg
Strong +16% interview lift
Without
With
+16.3%
Interview Lift
resolved cases with interview
Typical timeline
4y 11m
Avg Prosecution
27 currently pending
Career history
178
Total Applications
across all art units

Statute-Specific Performance

§101
11.2%
-28.8% vs TC avg
§103
42.6%
+2.6% vs TC avg
§102
23.4%
-16.6% vs TC avg
§112
19.9%
-20.1% vs TC avg
Black line = Tech Center average estimate • Based on career data from 151 resolved cases

Office Action

§102 §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. Claims 1 - 5 , are pending in this application. C laim Rejections - 35 USC § 112 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. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: 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 of carrying out his invention. Claims 1-4, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims are drawn to prevention, which implies glaucoma has not occurred. But, the specification fails to disclose how a “normal” subject predisposed to glaucoma will be identified and treated before the occurrence of glaucoma. Deleting prevent/preventing in every occurrence will obviate the rejection. 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 appl icant regards as his invention. Claims 1-3, 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. “[P]reparation method comprising a step of administering”, claim 1, lines 2-3, is not clear. Preparation is a process of making, not an administering step. Hence, the inventor fails 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. Appropriate correctio is required. 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(s) 1- 5 , are rejected under 35 U.S.C. 102 (a) as being anticipated by Cipriano de Sousa et al., US 2006/0008506 , which teaches treatment of glaucoma with impregnated composition of valdecoxib on optical devices . See the attached abstract . Claims 1-3, cite inherent properties of valdecoxib. Under the US patent practice, inherent property, is not a limitation of a product or compound. See In re Best , 562 F.2d 1252; 195 USPQ 430 (CCPA, 1977), Titanium Metals Corp. v Banner, 778 F.2d 775 (Fed. Cir. 1985), Continental Can Co. v Monsanto Co., 948 F.2d 1264 (Fed. Cir. 1991), In re Cruciferous Sprout Litig., 301 F.3d 1343 (Fed. Cir. 2002), In re Crish, 393 F.3d 1253 (Fed. Cir. 2004). IDS No IDS was filed in this application. The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." See the MPEP 2000 and 37 CFR 1.97, 1.98. The references and English translations of all foreign documents must be submitted. Telephone Inquiry Any inquiry concerning this communication or earlier communications from the examiner should be directe d to Taofiq A. Solola, whose telephone number is (571) 272-0709. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, An dy Kosar , can be reached on (571) 272-0 913 . The fax phone number for this Group is (571) 273-8300. Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the Group receptionist whose telephone number is (571) 272-1600. /TAOFIQ A SOLOLA/ Primary Examiner, Art Unit 1625 November 17, 2025
Read full office action

Prosecution Timeline

Jun 28, 2023
Application Filed
Nov 22, 2023
Response after Non-Final Action
Nov 17, 2025
Non-Final Rejection — §102, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
35%
Grant Probability
51%
With Interview (+16.3%)
4y 11m
Median Time to Grant
Low
PTA Risk
Based on 151 resolved cases by this examiner. Grant probability derived from career allow rate.

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