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 .
RCE papers were filed 01/22/2026.
Election/Restrictions
Claims 1-4 and 6-20 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/18/2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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.
The rejection of claim 5 under 35 U.S.C. 102(a)(1) as being anticipated by WO2018013929, as stated in paper dated 02/02/2026, is upheld. As previously stated, WO teaches compound VIII (GSK343) on page 15 and that the compounds of the invention have the ability to treat T cell exhaustion which includes treating chronic viral disease (e.g. HBV) (page 4 line 30). The WO teaches that the compound GSK343 which is compound VIII of the instant claim 5 treats HBV. The same patient population with the same condition being treated with the same drug with the same outcome means that the same drug (GSK343 which is the instant compound VIII) means that GSK343 must be treating HBV infection by reducing cccDNA and/or pgRNA in infected cells. This in inherency. This anticipates the instant claim 5.
Applicant argues in paper dated 06/02/2026 that all of the limitations of the claim 5 have not been met by WO.
However, claim 5 is drawn to a method of treating HBV by administering a pharmaceutically acceptable composition of one of Formula VIII, IX or X as depicted in claim 5 page 2 of the claims. WO teaches the treatment of a chronic viral disease (e.g. HBV) on page 4 line 30 with a compound identified as GSK343 which is the same compound formula VIII. Wo inherently performs the same function as claimed in claim 5. Treating HBV with formula VIII.
MPEP section 2112.02.
In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986) (The claims were directed to a method of enhancing color effects produced by ambient light through a process of absorption and reflection of the light off a coated substrate. A prior art reference to Donley disclosed a glass substrate coated with silver and metal oxide 200-800 angstroms thick. While Donley disclosed using the coated substrate to produce architectural colors, the absorption and reflection mechanisms of the claimed process were not disclosed. However, King’s specification disclosed using a coated substrate of Donley’s structure for use in his process. The Federal Circuit upheld the Board’s finding that "Donley inherently performs the function disclosed in the method claims on appeal when that device is used in ‘normal and usual operation’" and found that a prima facie case of anticipation was made out. Id. at 138, 801 F.2d at 1326. It was up to applicant to prove that Donley’s structure would not perform the claimed method when placed in ambient light.)
This rejection is upheld.
Conclusion
Claim 5 remains rejected. Claims 1-4 and 6-20 remain withdrawn. No claim is allowed.
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to D MARGARET M SEAMAN whose telephone number is (571)272-0694. The examiner can normally be reached M-F 8am-4pm Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached at 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D MARGARET M SEAMAN/Primary Examiner, Art Unit 1625
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