DETAILED ACTION
Claims 1-13 are currently pending in the instant application. Claims 1-13 are rejected in this Office 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 .
I. Priority
The instant application claims benefit of Foreign Application REPUBLIC OF KOREA 10-2023-0073997, filed on June 9, 2023.
II. Information Disclosure Statement
The information disclosure statements (IDS) submitted on August 29, 2023 and April 2, 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
III. 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.
Claims 1-3 and 6-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pai (EP 3 842 042 (A1)). The instant invention claims
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The Pai, et al. reference teaches metal ion-bound ionic compounds such as calcium salts of dichloroacetic acid and ascorbic acid (see example 1-1, paragraph 0083, page 9) and pharmaceutical compositions (paragraph 0026, page 5) or food compositions (paragraph 0075, page 9) comprising these ionic compounds. The prior art further teaches the use of the calcium salts of dichloroacetic acid and ascorbic acid in combination with Fluorouracil, an anticancer agent (see Table 4, page 16). This species of pharmaceutical composition anticipates the genus pharmaceutical composition of the instant invention, wherein the pharmaceutical compounds are stated above. The Examiner wants to point out that Applicants have included an intended use “for preventing or treating cachexia and muscle loss” which does not bear patentable weight with regards to the prior art.
“A recitation of the intended utility in the preamble does not impart patentability
to a known composition. In re Spada, 911 F.2d 705, 15 U.S.P.Q.2d 1655 (Fed.
Cir. 1990).”
Claim Rejections - 35 USC § 112
The following is a quotation of the second paragraph of 35 U.S.C. 112:
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 1-13 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.
As stated in MPEP, 2173.05(a), “The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be "ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention." In re Packard, 751 F.3d 1307, 1311, 110 USPQ2d 1785, 1787 (Fed. Cir. 2014). Applicants need not confine themselves to the terminology used in the prior art, but are required to make clear and precise the terms that are used to define the invention whereby the metes and bounds of the claimed invention can be ascertained. During patent examination, the pending claims must be given the broadest reasonable interpretation consistent with the specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Prater, 415 F.2d 1393, 162 USPQ 541 (CCPA 1969). See also MPEP § 2111 - § 2111.01. When the specification states the meaning that a term in the claim is intended to have, the claim is examined using that meaning, in order to achieve a complete exploration of the applicant’s invention and its relation to the prior art. In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989). See MPEP 2173.05(a).”
Specifically, the term “derivatives” renders the products indefinite as the term “derivatives” can be considered open-ended language when not clearly defined and includes additional subject matter in the compounds of claims 1 and 12 that is not described in the instant specification and is not particularly pointed out or distinctly claimed. Therefore, the Examiner does not know the metes and bounds of the claimed composition with regards to the term “derivatives”. A claim to a chemical compound cannot be open-ended, but must be claimed with precision. This rejection can be overcome by deleting the phrase “or derivatives thereof” in claims 1 and 12.
IV. Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shawquia Jackson whose telephone number is 571-272-9043. The examiner can normally be reached on 7:00 AM-3:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Adam Milligan can be reached on 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/SHAWQUIA JACKSON/Primary Examiner, Art Unit 1626
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