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
This Office Action is responsive to Applicant’s Amendment and Remarks, filed June 22, 2026. The amendment, filed June 22, 2026, is acknowledged, wherein claim 1 is amended.
Claims 1 – 20 are pending in this application and are currently examined.
Priority
This application is a domestic application, filed June 14, 2023, which claims benefit of foreign priority document JP2022-097340, filed June 16, 2022.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Receipt is acknowledged of certified English translation of the foreign application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/22/2026 was filed after the mailing date of the previous Office Action on December 23, 2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Withdrawn Rejections
The rejection of claims 1 – 7, 12 – 15, and 17 – 20 in the previous Office Action, dated December 23, 2025, under 35 U.S.C. 103 as being unpatentable over Curtis-Fisk et al. has been considered and is withdrawn in view of the amended claim 1.
The rejection of claims 8 and 16 in the previous Office Action, dated December 23, 2025, under 35 U.S.C. 103 as being unpatentable over Curtis-Fisk et al. as applied to claims 1 – 7, 12 – 15, and 17 – 20 above, and further in view of Obara has been considered and is withdrawn in view of the amended claim 1.
The rejection of claims 9 – 10 in the previous Office Action, dated December 23, 2025, under 35 U.S.C. 103 as being unpatentable over Curtis-Fisk et al. as applied to claims 1 – 7, 12 – 15, and 17 – 20 above, and further in view of Asrar has been considered and is withdrawn in view of the amended claim 1.
The rejection of claim 11 in the previous Office Action, dated December 23, 2025, under 35 U.S.C. 103 as being unpatentable over Curtis-Fisk et al. as applied to claims 1 – 7, 12 – 15, and 17 – 20 above, and further in view of Yu et al. has been considered and is withdrawn in view of the amended claim 1.
Claims 1 – 8 and 12 – 20 are rejected in the previous Office Action, dated December 23, 2025, on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 6 and 8 – 13 of copending Application No. 18/334,456 in view of Obara. As terminal disclaimer is filed and is approved on June 22, 2026, the rejection has been withdrawn.
The following are new grounds of rejection necessitated by Applicant’s Amendment, filed June 22, 2026, wherein claim 1 is amended.
New Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
i. Determining the scope and contents of the prior art.
ii. Ascertaining the differences between the prior art and the claims at issue.
iii. Resolving the level of ordinary skill in the pertinent art.
iv. Considering objective evidence present in the application indicating obviousness or
nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 – 7, 12 – 15, and 17 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Curtis-Fisk et al. (WO2015/047762A1) in view of Viridén et al. (Biomacromolecules, 2009, Vol. 10, Issue 3, page 522 – 529, PTO-892) and Kikuchi et al. (US2018/0118854A1).
Curtis-Fisk et al. teach a composition comprising a tonicity-adjusting agent, an aqueous liquid diluent, and 0.1 to 6 weight percent of a cellulose ether (Abstract). Thus, Curtis-Fisk et al. teach a composition containing a cellulose ether in an aqueous liquid vehicle and further teach an amount of cellulose ether falling within the claimed amount recited in claims 5, 13, and 18, which require the HPMC content of the liquid composition to be more than 0% by mass and not more than 20% by mass. The preferred cellulose ether is hydroxypropyl methylcellulose (HPMC) (page 4, lines 19 – 20). The disclosure corresponds to claim 1, which requires that the cellulose ether be hydroxypropyl methylcellulose, and therefore also supplies the HPMC required by claims 4 – 7, 12 – 15, and 17 – 20. The cellulose ether utilized in the composition has a viscosity of from 2.4 to 1000 mPa∙s measured as a 2 weight-% solution in water at 20 ⁰C (page 6, lines 15 – 18) and it has a MS of 0.05 to 0.35 (page 5, line 25) and a DS of from 1.6 to 2.5 (page 5, line 18). This teaching corresponds to claim 1, which requires a viscosity at 20 ⁰C of a 2 mass-% aqueous solution of 1.0 to 50 mPa∙s, because Curtis-Fisk’s disclosed range of 2.4 – 1000 mPa∙s overlaps the claimed range of 1.0 to 50 mPa∙s. The disclosure also reads on claim 1, which requires an MS of hydroxypropoxy groups of 0.11 to 0.5. For the DS, the disclosure of Curtis-Fisk et al. corresponds to claim 2 because the disclosed DS range overlaps the claimed methoxy DS range. The molar fraction of the 26-Me-3-HA, which is the HPMC type with two hydroxy groups in the 2- and 6-positions of the anhydroglucose unit are substituted with methyl groups and the 3-position is substituted with hydroxyalkyl is 0.0211 with an MS of 0.23 (page 16, lines 18 – 20; page 20, Table 3). Curtis-Fisk further characterize the positional substitution of the hydroxypropyl groups of HPMC, including 26-Me-3-HAMe. The positional substitution values of 26-Me-3-HAMe is 0.0047 (Table 3). The disclosure corresponds to the MF-at-3-position limitation of claim 1 because it demonstrates hydroxypropyl and methoxypropoxy substitution at the 3-position of anhydroglucose units in HPMC and none of hydroxy groups at the 2-position and 6-position carbons is substituted with a hydroxypropoxy group. The composition may additionally comprise an organic liquid diluent (page 8, lines 31 – 32), wherein an organic liquid diluent as used means an organic solvent (page 9, line 9). The organic liquid diluent is preferably pharmaceutically acceptable, such as ethanol (page 9, lines 16 – 17) and at least 55 percent of the weight of the liquid diluent is water (page 10, lines 15 – 18). Thus, the disclosure reads on the limitations “organic solvent” of claims 4, 12, and 17 and “the organic solvent is miscible with water and the liquid composition further comprises water” of claims 6, 14, and 19. The composition may further comprise a preferred physiologically active agent (page 10, line 31). Thus, the disclosure reads on the limitation “an active ingredient” of claims 7, 15, and 20.
However, Curtis-Fisk et al. do not teach the ratio of 0.12 or more, as calculated by dividing a molar substitution of anhydroglucose units in which only a hydroxy group at the 3-position carbon is substituted with a hydroxypropoxy or methoxypropoxy group by a molar substitution of hydroxypropoxy groups recited in claim 1 and the molar fraction recited in claim 3.
Viridén et al. teach that industrially produced HPMC is chemically heterogenous and that its solution behavior is correlated not only with molecular weight and degree of substitution, but also with the substituent pattern (Abstract). Viridén et al. further teach that the substituent pattern can vary strongly, and hence also the solution behavior of the polymer and explain that the behavior of HPMC cannot always be predicted from the average degree of substitution alone because the substituent pattern affects the physiochemical properties of cellulose derivatives (page 522, Left Col., para. 1). Thus, these teachings establish that the distribution or pattern of substituents in HPMC is known to be a structural characteristic that affect HPMC solution behavior. Viridén et al. teach that caustic-treated cellulose is reacted with methyl chloride and propylene oxide in the production of HPMC, and that the three hydroxyl groups on the glucose unit have different reactivities and therefore do not have the same probability of substitution (page 522, Left Col., para. 2; Right Col., para. 1). Viridén et al. further explain that the end product is dependent on whether methyl chloride and propylene oxide are added consecutively or as a mixture (page 522, Right Col., para. 1). Thus, Viridén et al. provide evidence that the positional substitution characteristic recited in claim 1 is a process-dependent HPMC structural variable. Viridén et al. conclude that different properties in solution can be achieved by altering the substituent pattern of HPMC batches of the same commercial grade (page 529, Left Col., para. 2). Thus, Viridén et al. support the motivation to control the HPMC substitution pattern recited in claim 1 because it establishes that altering substitution pattern is known to change solution properties even when the HPMC materials are of the same commercial grade.
Kikuchi et al. teach a process for producing the hydroxypropyl methylcellulose by reacting alkali cellulose with a methyl etherifying agent, such as methyl chloride, and a hydroxypropyl etherifying agent, such as propylene oxide (para. [0046]). Kikuchi et al. further teach that, in order to suppress hydroxypropyl etherification of the hydroxyl group on the 2-position carbon, and preferentially advance hydroxypropyl etherification of the hydroxyl group on the 3-position carbon, the reaction with the hydroxypropyl etherifying agent is preferentially preceded by reaction with the methyl etherifying agent. Kikuchi et al. teach that the reaction control can produce HPMC having a 2-position MS to 3-positon MS ratio of 1.2 or less (para. [0047]; para. [0052]). These teachings corresponds to the limitation of claim 1 requiring HPMC having a ratio of MF at the 3-position to the MS of hydroxypropoxy groups of 0.12 or more because Kikuchi et al. teach controlling the etherification of HPMC to suppress hydroxypropyl substitution at the 2-position and preferentially advance hydroxypropyl substitution at the 3-position. Thus, Kikuchi et al. teach modifying the positional distribution of hydroxypropyl substitution in the direction of increased 3-position substitution. Kikuchi et al. further teach controlling the relative reaction progression of the methyl etherifying agent and hydroxypropyl etherifying agent (para. [0048 – 0052]) and teach that the HPMC may be produced under conditions similar to known methods (para. [0054]). Thus, Kikuchi et al. provide a known manufacturing technique for controlling the positional distribution of hydroxypropyl substitution in HPMC, thereby providing a skilled artisan with an approach for increasing hydroxypropyl substitution at the 3-position.
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the positional substitution distribution of the HPMC as taught by Curtis-Fisk et al. according to the teachings of Kikuchi et al. and Viridén et al. to obtain an HPMC having a ratio of MF at the 3-position to MS of hydroxypropoxy groups of 0.12 or more. Curtis-Fisk et al. teach HPMC having the claimed general hydroxypropoxy MS, viscosity, and positional substitution characteristics. In particular, Curtis-Fisk et al. report a 26-Me-3-HA value of 0.0211, a 26-Me-3-HAMe value of 0.0047, and an MS of hydroxypropoxy groups of 0.23. The relevant MG at 3-position is 0.0258, which give a ratio of 0.112. Thus, Curtis-Fisk et al. teach an HPMC having the claimed type of positional substitution distribution and a ratio of approximately 0.112. Viridén et al. teach that the substituent pattern of HPMC is a structural characteristic that affects the solution behavior of HPMC and further teach that the resulting substitution pattern depends on HPMC manufacturing conditions, including the manner in which methyl chloride and propylene oxide are introduced. Viridén et al. further conclude that different solution properties may be achieved by altering the substituent pattern of HPMC, even for materials of the same commercial grade. Kikuchi et al. then provide a specific technique for altering that positional substitution distribution. Kikuchi et al. teach producing HPMC by reacting alkali cellulose with a methyl etherifying agent and a hydroxypropyl etherifying agent and explicitly teach controlling the reaction so as to suppress hydroxypropyl etherification at the 2-position and preferentially advance hydroxypropyl etherification at the 3-position. Kikuchi et al. further teach controlling the relative reaction progression of the methyl etherifying agent and hydroxypropyl etherifying agent to obtain HPMC having increased 3-position hydroxypropyl substitution relative to 2-position substitution. Accordingly, the difference between the HPMC of Curtis-Fisk et al. having an MF at 3-position/MS ratio of approximately 0.112 and the HPMC recited in claim 1 having a ratio of at least 0.12 resides in the relative amount of substitution at the 3-position. Kikuchi et al. explicitly teach modifying HPMC etherification in the direction that increases hydroxypropyl substitution at the 3-position, while Viridén et al. establish that HPMC substituent pattern is known to be a controllable, property-relevant structural characteristics. Therefore, applying the known etherification-control technique of Kikuchi et al. to the HPMC of Curtis-Fisk et al. would have been an application of a known technique to a known HPMC for the predictable purpose of increasing the relative amount of 3-position substitution. One of ordinary skill in the art would have been motivated to modify the HPMC of Curtis-Fisk et al. because Viridén et al. teach that HPMC solution behavior cannot always be explained by average degree of substitution alone and that the substituent pattern affects HPMC solution properties. Viridén et al. further teach that the substitution pattern depends upon the production conditions, including whether methyl chloride and propylene oxide are introduced consecutively or as a mixture. Thus, a skilled artisan seeking to control or alter the solution behavior of the HPMC taught by Curtis-Fisk et al. would have had a reason to control its substitution pattern rather than merely maintaining its average MS. Kikuchi et al. provide the specific approach for doing so and direct the skilled artisan toward greater hydroxypropyl substitution at the 3-position relative to the 2-position through control of methyl etherification and hydroxypropyl etherification. Starting with the HPMC of Curtis-Fisk et al. already having a ratio of approximately 0.112, the skilled artisan would therefore have been led to increase the relative 3-position substitution, thereby increasing the claimed MF at 3-position/MS ratio toward and into values of at least 0.12. One of ordinary skill in the art would have had a reasonable expectation of success because Kikuchi et al. do not merely suggest that the positional substitution of HPMC might be alterable. Kikuchi et al. identify the relevant chemical reactions and teach the process variables for altering the positional distribution, including the relative progression of methyl etherification and hydroxypropyl etherification and the feed conditions of the respective etherifying agent. Kikuchi et al. teach that control of these reactions may suppress hydroxypropyl substitution at the 2-position while preferentially advancing hydroxypropyl substitution at the 3-position. Viridén et al. confirm that the substitution pattern of HPMC is dependent upon HPMC manufacturing conditions and that alteration of the substituent pattern produces different solution properties. Thus, the prior art provide both an understanding that the positional substitution distribution may be altered and a specific manufacturing technique for altering it in the desired direction.
Claims 8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Curtis-Fisk et al. (WO2015/047762A1) in view of Viridén et al. (Biomacromolecules, 2009, Vol. 10, Issue 3, page 522 – 529, PTO-892) and Kikuchi et al. (US2018/0118854A1) as applied to claims 1 – 7, 12 – 15, and 17 – 20 above, and further in view of Obara (CRC Press, 2008, Chapter 10, page 279 – 322, cited in the PTO-892 on December 23, 2025).
Curtis-Fisk et al., Viridén et al., and Kikuchi et al. teach the limitations discussed above. Curtis-Fisk et al. further teach that HPMC has been found to be very useful in a variety of application, such as film formation (page 3, lines 28 – 30).
However, Curtis-Fisk et al., Viridén et al., and Kikuchi et al. do not teach a method for producing a preparation, wherein the method comprising a step of coating a core comprising an active ingredient with the liquid composition.
Obara teaches that HPMC forms transparent, tough, and flexible films from aqueous solutions (page 288, para. 2). Obara explicitly teaches that the required viscosity of a solution for aqueous film coating is commonly less than 100 mPa∙s (page 283, para. 2). Obara discloses the stability of aspirin/ascorbic acid tablets coated with HPMC in aqueous system (page 289, Table 7).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the film formation application of HPMC as taught by Curtis-Fisk et al. into coating a core comprising an active ingredient in view of Obara because both Curtis-Fisk et al. and Obara teach that HPMC may be used in film formation and Obara explicitly teaches that the required viscosity of a solution for aqueous film coating is less than 100 mPa∙s. One would have been motivated to apply the HPMC with the viscosity less than 100 mPa∙s as taught by Curtis-Fisk et al. for aqueous film coating because Obara teaches that the required viscosity of a solution for aqueous film coating is less than 100 mPa∙s and Curtis-Fisk et al. teach the HPMC that has the viscosity within the same range. Therefore, one of the ordinary skill in the art would have had a reasonable expectation of success to modify the film formation application of HPMC as taught by Curtis-Fisk et al. into coating a core comprising an active ingredient in view of Obara because it is known in the art that HPMC with the viscosity of less than 100 mPa∙s is commonly used for aqueous film coating.
Claims 9 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Curtis-Fisk et al. (WO2015/047762A1) in view of Viridén et al. (Biomacromolecules, 2009, Vol. 10, Issue 3, page 522 – 529, PTO-892) and Kikuchi et al. (US2018/0118854A1) as applied to claims 1 – 7, 12 – 15, and 17 – 20 above, and further in view of Asrar (Clemson OPEN, 2012, cited in the PTO-892 on December 23, 2025).
Curtis-Fisk et al., Viridén et al., and Kikuchi et al. teach the limitations discussed above. Curtis-Fisk et al. further teach that HPMC has been found to be very useful in a variety of application, such as film formation (page 3, lines 28 – 30).
However, Curtis-Fisk et al., Viridén et al., and Kikuchi et al. do not teach a method for producing a film.
Asrar teaches the preparation of films using HPMC. Pure HPMC solution is formed using 12 g of HPMC in the form of a white powder. After 24 hr, a clear HPMC solution is formed. Pure HPMC solution is used to make put HPMC films (page 29, para. 1). Approximately 45 mL of the prepared HPMC is casted using a customized film caster at 20 mm/sec onto a BYTAC® coated 157 mm x 356 mm glass plate. Cast films are then placed in a drying oven for 4 hours and the placed in 50% RH and 25 ⁰C for an additional 8 hours. After a total of 12 hours drying, the films are peeled from the glass plates (page 30, para. 3; page 31, para. 1).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the film formation application of HPMC as taught by Curtis-Fisk et al. with the method of producing a film in view of Asrar because both Curtis-Fisk et al. and Asrar teach that HPMC may be used in film formation and Asrar explicitly teaches the steps of film casting. One would have been motivated to combine the film formation application of HPMC as taught by Curtis-Fisk et al. with the method of producing a film in view of Asrar because Asrar teaches that the steps of casting film using HPMC. Therefore, one of the ordinary skill in the art would have had a reasonable expectation of success to combine the film formation application of HPMC as taught by Curtis-Fisk et al. with the method of producing a film in view of Asrar because the method of film formation is already known in the art.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Curtis-Fisk et al. (WO2015/047762A1) in view of Viridén et al. (Biomacromolecules, 2009, Vol. 10, Issue 3, page 522 – 529, PTO-892) and Kikuchi et al. (US2018/0118854A1) as applied to claims 1 – 7, 12 – 15, and 17 – 20 above, and further in view of Yu et al. (Journal of Food Science, 2020, cited in the PTO-892 on December 23, 2025).
Curtis-Fisk et al., Viridén et al., and Kikuchi et al. teach the limitations discussed above. Curtis-Fisk et al. further teach that HPMC has been found to be very useful in a variety of application (page 3, lines 28 – 29).
However, Curtis-Fisk et al., Viridén et al., and Kikuchi et al. do not teach a method for producing a solid dispersion.
Yu et al. teach curcumin solid dispersions that are prepared by using HPMC to enhance water solubility of curcumin (Abstract). When curcumin is completely dissolved, it is mixed with the HPMC solution. After this all ethanol in the mixed solution is removed by using a rotary evaporator. The prepared solutions are spray dried (page 3867, Left Col., para. 4). Further, HPMC has the advantage of inhibiting curcumin crystallization and enhancing its membrane permeability by lowering the order level of the phospholipid bilayer (page 3867, Left Col., para .1).
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the HPMC as taught by Curtis-Fisk et al. to form a curcumin-HPMC solid dispersion in view of Yu et al. because Curtis-Fisk et al. teach the HPMC has a variety of application and Yu et al. teach that HPMC may be used in solid dispersion formation and Yu et al. explicitly teaches the steps of said formation. One would have been motivated to combine the HPMC as taught by Curtis-Fisk et al. with the method of forming a solid dispersion in view of Yu et al. because Curtis-Fisk et al. teach that HPMC is a very versatile material and Yu et al. teaches that the steps of forming a solid dispersion using HPMC. Therefore, one of the ordinary skill in the art would have had a reasonable expectation of success to combine the HPMC as taught by Curtis-Fisk et al. to form a curcumin-HPMC solid dispersion in view of Yu et al. because the method of forming a solid dispersion is already known in the art.
Conclusion
No claim is found to be allowable.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/H.Y.L./Examiner, Art Unit 1693
/SCARLETT Y GOON/Supervisory Patent Examiner, Art Unit 1693
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