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
STATUS OF THE CLAIMS: Claims 1-20 are pending in this application.
Election/Restrictions
Applicant’s election of species in the reply filed on December 18, 2025 is acknowledged. All claims were examined in its entirety.
Claim Rejections - 35 USC § 101 & 35 USC § 112, 1st paragraph
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 19-20 are rejected under 35 U.S.C. 101 because the claimed invention is not supported by either an asserted utility or a well established utility. The claims are “Use” claim, and use claims are directed to non-statutory subject matter.
Claim Rejections - 35 USC § 112, 1st paragraph
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 19-20 are also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either an asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
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, 13-15, and 19-20 are rejected under 35 U.S.C. 102 as being anticipated by Wei et al. US Pub. 2015/016,924).
Applicant claims the following method for treating neuropathic ocular pain:
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This reference discloses Applicant’s methods on page 26, lines 1-10, paragraphs [0046]-[0047], [0050], [0178], and [0255]. (See Abstract and entire document). The methods read on the instant claim. Since this reference teaches the exact methods, Applicant’s claims are anticipated, and thus, rejected under 35 U.S.C. 102.
Regarding claim 2, this reference discloses Applicant’s method in, paragraphs [0035], [0041]-[0042], and [0255], and regarding claim 3, this reference discloses Applicant’s method in paragraph [0255].
Regarding claims 13-15, this reference discloses Applicant’s methods on page 26, paragraphs [0258] left column, page 26, lines 1-10, paragraphs [0046]-[0047], [0050], [0178], and [0255]. (See Abstract and entire document). Additionally, in paragraphs [0035], [0041]-[0042], and [0255], this reference disclose the method of Applicant’s claim 14. Further, this reference discloses Applicant’s method of claim 15 in paragraphs on page 27, lines 16-17.
Regarding claims 19-20, this reference discloses Applicant’s methods on page 26, paragraphs [0258] left column, page 26, lines 1-10, paragraphs [0046]-[0047], [0050], [0178], and [0255], and on page 27, lines 16-17.
Since this reference teaches the exact methods, Applicant’s claims are anticipated, and thus, rejected under 35 U.S.C. 102.
Claims 4-12 and 16-18 are rejected for being dependent on a rejected claim.
Conclusion
Claims 1-20 are pending. Claims 1-20 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL V WARD whose telephone number is (571)272-2909. The examiner can normally be reached M-F 9am to 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Alstrum-Acevedo can be reached at 571-272-5548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL V WARD/ Primary Examiner, Art Unit 1622
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