DETAILED ACTION
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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119
(a)-(d). The certified copy has been filed in parent Application No. TAIWAN 112130678, filed
on 08/15/2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/31/2023 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Status of claims
Claims 1, and 3-11 are pending in this application and are currently under examination. Claims 1, 3, and 9 have been amended. Claim 2 has been cancelled by applicant without prejudice or disclaimer.
Applicant’s arguments, filed 02/20/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112
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.
Claim 6 is 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 claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Dependent claim 6 cites the limitation wherein the disease caused by the coronavirus infection is a respiratory disease caused by SARS-CoV or SARS-CoV-2, which is broader than the scope of limitations from independent claim 1 which does not encompass any respiratory disease caused by SARS-CoV or SARS-CoV2. 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.
This rejection may be overcome by amending the language of claim 6 to say “wherein the disease caused by the coronavirus infection is severe respiratory syndrome coronavirus SARS-CoV, Middle East Respiratory Syndrome coronavirus (MERS-CoV)”, or other intended respiratory conditions applicant is enabled by specification to encompass.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Applicants method of treating a coronavirus infection by administering the compound of formula 12 makes a contribution over the prior art of record of Furman (WO 2023/027951 Al). Furman discloses the compound of l0l(Z), 13 '(E), 15'(E) Heptadecatrienyl hydroquinone (pg. 170) which does satisfy the structural limitations of applicant’s compound of formula 12 but does not fairly teach or suggest it’s explicit use in a method of treatment of a coronavirus infection or disease in a subject in need thereof, more specifically, HCoV-229E alpha coronavirus, HCoV-NL63 alpha coronavirus, HCoV-HKUl beta coronavirus, HCoV-OC43 beta coronavirus, severe acute respiratory syndrome coronavirus (SARS-CoV), Middle East Respiratory Syndrome coronavirus (MERS-CoV) or the novel coronavirus (SARS-CoV-2). Therefore the instant claims of 1, 4-5, and 7-11 are found allowable as of the current record.
Conclusion
Claims 1, 3-5, and 7-11 are allowable, claim 6 is rejected.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERNESTO VALLE JR whose telephone number is (703)756-5356. The examiner can normally be reached 0730-1700 M-F EST, 1st Friday off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam C Milligan can be reached at 571-270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E.V./Examiner, Art Unit 1623
/SAMANTHA L SHTERENGARTS/Primary Examiner, Art Unit 1623
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