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/CN2022/094753 05/24/2022, which claims benefit of the foreign application: CNINA CN202110606431.2 05/28/2021.
2. Claims 1-15 are pending in the application.
3. 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
4. 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).
Claims 1-2, 4-6 and 14-15 are rejected under 35 U.S.C. 103(a) as being obvious
over Ma et al. US 2019/0046500 A1, and Ma et al. US 2014/0121242 A1.
Applicants claim a substituted cinnamamide compound or an antidepressant and anxiolytic compound, having the following structural formula (M)
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, see claims 1-2. Dependent claim s 4-6 and 14-15 further limit the scope of compounds, i.e., in present of pharmaceutical acceptable salt, formulation compositions as tablet or capsules, for treating psychiatric disorder including anxiety or depression.
Determination of the scope and content of the prior art (MPEP §2141.01)
Ma et al. ‘500 discloses a compound/composition of formula (II), i.e.,
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, or a pharmaceutical acceptable salt, wherein R1 is CF3, n
is 1, X is O, and Y is R6 and R6 is H, see column 10. Ma et al. ‘500 compositions can be formulated as a tablet or capsules, for it is for treating psychiatric disorder including anxiety, see section [0043] and section [0047] in columns 4-5.
Ma et al. ‘242 discloses a compound/composition of formula (II), i.e.,
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, or a pharmaceutical acceptable salt, wherein R1 is CF3,
and R2 is H, see column 19. Ma et al. ‘242 compositions can be formulated as a tablet or capsules, for it is for treating psychiatric disorder including depressant-type mental disease, see section [0048] and section [0062] in column 5.
Determination of the difference between the prior art and the claims (MPEP §2141.02)
The difference between instant claims and Ma et al. ‘500 and ‘242 is that the instant claims are embraced within the scope of Ma et al. ‘500 and ‘242. Ma et al. ‘500 and ‘242 compound/composition read on the instant claims 1-2, 4-6 and 14-15.
Finding of prima facie obviousness-rational and motivation (MPEP §2142-2143)
One having ordinary skill in the art would find the claims 1-2, 4-6 and 14-15 prima facie obvious because one would be motivated to employ the compound/composition and methods of use of Ma et al. ‘500 and ‘242 to obtain instant invention.
The motivation to make the claimed compound/composition and methods of use derived from the known compound/composition and methods of use of Ma et al. ‘500 and ‘242 would possess similar activity to that which is claimed in the reference.
Double Patenting
5. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the "right to exclude" granted by a patent and to prevent possible harassment by multiple assignees. See In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1 and 15 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claim 3 of Ma et al. US 10,071,989. Although the conflicting claims are not identical, they are not patentably distinct from each other and reasons are as follows.
Applicants claim a substituted cinnamamide compound or an antidepressant and anxiolytic compound, having the following structural formula (M)
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, see claim 1. The instant compound is used for treating depression disorder.
Ma et al. ‘989 claims a compound of formula (II), i.e.,
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, wherein R1 is CF3, and R2 is H, see claim 3 in column 34. Ma et al.
‘989 compound is used for treating depressive-type mental disease, see claim 9 in
column 36.
The difference between instant claims and Ma et al. ‘989 is that the instant claims are embraced within the scope of Ma et al. ‘989.
One having ordinary skill in the art would find the claims 1 and 15 prima facie obvious because one would be motivated to employ the compound and methods of use of Ma et al. ‘989 to obtain instant invention.
The motivation to make the claimed compound and methods of use derived from the known compound and methods of use of Ma et al. ‘989 would possess similar activity to that which is claimed in the reference.
Claim Objections
6. Claims 3, and 7-13 are objected to as being dependent on rejected claim 1.
Claims 11 -12 are objected to as having a typographic error: Claims 11-12 shall depend on claim 7. Correction is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to REI TSANG SHIAO whose telephone number is
(571)272-0707. The examiner can normally be reached on 8:30 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached on 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1691
February 09, 2026