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
Priority and Status of the Claims
1. This application is a 371 PCT/JP2022/004692 2/07/2022, which claims benefit of the foreign application: JAPAN JP2021-018177 02/08/2021.
2. Claims 8-19 are pending in the application.
Claim Rejections - 35 USC § 112
3. 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.
Claims 8-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112,
first paragraph (pre-AIA ), because the specification does not reasonably provide
enablement of “preventing” of pain. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
ln In re Wands, 8 USPQ2d 1400 (1988), factors to be considered in determining
whether a disclosure meets the enablement requirement of 35 U.S.C. 112, first
paragraph, have been described. They are:
1. the nature of the invention,
2. the state of the prior art,
3. the predictability or Iack thereof in the art,
4. the amount of direction or guidance present,
5. the presence or absence of working examples,
6. the breadth of the claims,
7. the quantity of experimentation needed, and
8. the level of the skill in the art.
In the instant case:
The nature of the invention
The nature of the invention of claims 8-19 is intent methods of use using a composition for preventing pain, see claim 8.
The state of the prior art and the predictability or lack thereof in the art
The state of the prior art is that the pharmacological art involves screening in
vitro and in vivo to determine which compounds exhibit the desired pharmacological
activities (i.e. what compounds can treat which specific diseases by what mechanism).
There is no absolute predictability even in view of the seemingly high Ievel of skill in the
art. The existence of these obstacles establishes that the contemporary knowledge in
the art would prevent one of ordinary skill in the art from accepting any therapeutic
regimen on its face. Goldenberg et al. US 4,447,443, it discloses a compound
indomethacin is used for treating pain and inflammation but not preventing pain in a health patient, see claim 5 in column 14.
The instant claimed invention is highly unpredictable as discussed below:
It is noted that the pharmaceutical art is unpredictable, requiring each
embodiment to be individually assessed for physiological activity. In re Fisher, 427 F.2d 833,166 USPQ 18 (CCPA 1970) indicates that the more unpredictable an area is, the more specific enablement is necessary in order to satisfy the statute.
Applicants are claiming intent methods of use using the instant compositions for preventing pain. As such, the specification fails to enable the skilled artisan to use the compositions of claims effective for “preventing” pain.
In addition, there is no established correlation between in vitro or in vivo activity and accomplishing for “preventing” aging of the skin and those skilled in the art would not accept allegations in the instant specification to be reliable predictors of success, and those skilled in the art would not be able to use the instant compounds since there is no description of an actual method wherein for “preventing” pain is prevented in a host.
Hence, one of skill in the art is unable to fully predict possible results from the administration of the instant composition due to the unpredictability of “preventing” pain. The “preventing” pain is known to have many obstacles that would prevent one of ordinary skill in the art from accepting treating or preventing regimen on its face.
The amount of direction or guidance present and the presence or absence of working examples
The only direction or guidance present in the instant specification is instant therapy efficacy for treating pain, see pages 3-6 of the specification. There are no in vitro or in vivo working examples present for the for “preventing” pain by the administration of the instant invention.
The breadth of the claims
The breadth of the claims is methods of use of the instant compound effective to treat or “preventing” pain.
The quantity of experimentation needed
The quantity of experimentation needed is undue experimentation. One of skill in
the art would need to determine how “preventing” pain by the administration of the instant invention and would furthermore then have to determine which of the claimed methods of use would provide “preventing” pain, if any.
The Ievel of the skill in the art
The Ievel of skill in the art is high. However, due to the unpredictability in the pharmaceutical art, it is noted that each embodiment of the invention is required to be individually assessed for physiological activity by successful conclusion'' and ''patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable''.
in vitro and in vivo screening to determine which methods of use exhibit the desired pharmacological activity and which would benefit from this activity. Thus, the specification fails to provide sufficient support of the broad use of the pharmaceutical composition of the instant claims for preventing of aging of the skin.
As a result necessitating one of skill to perform an exhaustive search for which metabolic-related disease s can be treated or prevented by what pharmaceutical compounds of the instant claims in order to practice the claimed invention. Thus, factors such as "sufficient working examples", "the level of skill in the art" and "predictability", etc. have been demonstrated to be sufficiently lacking in the instantly claimed methods. In view of the breadth of the claim, the chemical nature of the invention, and the lack of working examples regarding the activity of the claimed compounds in regards to the treatment or preventing of the many diseases, one having ordinary skill in the art would have to undergo an undue amount of experimentation to use the invention commensurate in scope with the claims.
Genentech lnc. v. Novo Nordisk A/S (CA FC) 42 USPQ2d 1001, states that “a
patent is not a hunting license. It is not a reward for search, but compensation for its successful conclusion'' and ''patent protection is granted in return for an enabling disclosure of an invention, not for vague intimations of general ideas that may or may not be workable''.
Therefore, in view of the Wands factors and ln re Fisher (CCPA 1970) discussed above, to practice the claimed invention herein, a person of skill in the art would have to engage in undue experimentation, with no assurance of success. This rejection can be overcome by deletion the limitation “preventing” from claim 8 would obviate the rejection.
4. 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 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.
Claim Rejections - 35 USC § 103
5. The following is a quotation of 35 U.S.C. 103(a) 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(f) or (g) prior art under 35 U.S.C. 103(a).
Claim 8 is rejected under 35 U.S.C. 103(a) as being obvious
over Tawarayama et al. Ocular Immunology and Inflammation, 2020, 30(4): 789-800,
and Goldenberg et al. US 4,447,443.
Applicants claim a method for preventing or treating an inflammatory disease and/or a pain disorder, comprising administering glutathione trisulfide or a pharmaceutically acceptable salt thereof and a non-steroidal anti-inflammatory drug or a pharmaceutically acceptable salt thereof to a patient in need thereof, see claim 8.
Determination of the scope and content of the prior art (MPEP §2141.01)
Tawarayama et al. disclose that glutathione trisulfide is used for attenuating
excessive inflammation.
Goldenberg et al. ‘443 discloses that a non-steroidal anti-inflammatory drug
indomethacin is used for treating pain and inflammation, see claim 5 in column 14.
Determination of the difference between the prior art and the claims (MPEP §2141.02)
The difference between instant claims and Tawarayama et al. and Goldenberg et al. ‘443 that the instant claims are embraced within the scope of Tawarayama et al.
and Goldenberg et al. ‘443
Finding of prima facie obviousness-rational and motivation (MPEP §2142-2143)
One having ordinary skill in the art would find the claim 8 prima facie obvious because one would be motivated to employ the methods of use of Tawarayama et al. and Goldenberg et al. ‘443 to obtain instant invention.
It is prima facie obvious to combine teachings from Tawarayama et al. and Goldenberg et al. ‘443 which provide methods of use using glutathione trisulfide and
a non-steroidal anti-inflammatory drug indomethacin from Tawarayama et al. and
Goldenberg et al. ‘443, each of which is taught by the prior art to be
useful for the same purpose, i.e., for treating pain or inflammatory disorders. Therefore idea of combining them flows logically from theirs having been individually taught in
the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA
1980), see MPEP 2144.06.
The motivation to make the claimed methods of use derived from the known
methods of use of Tawarayama et al. and Goldenberg et al. ‘443 would possess
similar activity to that which is claimed in the reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the
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/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1691
November 17, 2025