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 .
Summary
Claims 1 - 7 are pending in this office action. All pending claims are under examination in this application.
Priority
The current application filed on January 25, 2024 is a 371 of PCT/JP2022/024834 filed September 29, 2021, which in turn claims priority to JP2021-123384, filed on July 28, 2021.
Information Disclosure Statement
Receipt of the Information Disclosure Statement filed on January 25, 2024 is acknowledged. A signed copy of the PTO/SB/08 is attached to this office action.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4 and 5 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claims upon which they depend, or for failing to include all the limitations of the claims upon which they depend.
These claims recite an intended utility for the composition of claim 1 and, because they do not alter the makeup of the composition, are not further limiting.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies
with the statutory requirements.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
(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, 2 and 4-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsumoto et al. (WO 2016104780 published 6/30/2016). Because the WO document is in Japanese, the teachings have been taken from US 2017/0341037, which is an English-language equivalent.
Matsumoto et al. teach the claimed oxygen dissolved solution comprising oxygen clathrate compound that has at least 50 ppm dissolved oxygen, see paragraph [0010]. The method of determining the amount of oxygen dissolved has no patentable weight for his composition claim. The reference discloses the same solution; therefore, it anticipates claim 1.
With regard to claim 2, the entirety of the enema composition is the oxygen dissolved solution; therefore, this claim is also anticipated.
With regard to claims 4 and 5, the intended utility has no patentable weight, therefore, these claims are also anticipated.
With regard to claim 6, the solution of the reference clearly MUST be in a container, there is nothing structural differentiating an enema container from any other container; therefore, this claim is also anticipated.
With regard to claim 7, the method of making involves only blending; the method of measuring the amount of oxygen is taught in paragraphs [0035] – [0039]. Alternatively, because the method of measuring the oxygen content has nothing to do with the actual making of the solution, that portion of the claim has no patentable weight since it is carried out after the solution is made.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 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.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (WO 2016104780 published 6/30/2016) in view of de Matos et al. and Xu et al.
The teachings of Matsumoto et al. are outlined above. They do not teach the addition of a silver complex with an amino acid.
De Matos et al. teach silver nanoparticles prepared with amino acids for use as antimicrobials in products including pharmaceutics and medical devise, see middle of the first full paragraph on page 379, right column.
Xu et al. is a review article that discusses silver nanoparticles and their medical applications.
It would have been obvious to one of ordinary skill in the art prior to the instant effective filing date to add silver nanoparticles complexed with amino acids to the composition of Matsumoto et al. for the purpose of providing safe antimicrobial action.
Conclusion
No claim is allowed.
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/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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