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 .
Status of the Claims
Claims 1-2 are pending and currently under examination.
Information Disclosure Statement
Initialed and dated copies of Applicants’ information disclosure statements (IDS) filed on
04/15/2024 is attached to the instant Office action. The submission is in compliance with the
provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been
considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 2 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “an inorganic compound of magnesium chloride and magnesium sulfate” in line 1. This language is indefinite because it is not clear how one inorganic compound can comprise two compounds such as magnesium chloride and magnesium sulfate. In the interest of compact prosecution, the examiner interprets the phrase “an inorganic compound of magnesium chloride and magnesium sulfate” to mean an inorganic composition comprising magnesium chloride and magnesium sulfate.
Claim 1 recites the limitation “bound together” in line 1. This language is indefinite because it is not clear if “bound together” means that the magnesium chloride and the magnesium sulfate just need to be mixed together in a composition or “bound together” means that the magnesium sulfate and the magnesium chloride must be covalently bonded together. In the interest of compact prosecution, the examiner interprets the phrase “bound together” to mean that the composition must be contained magnesium chloride and the magnesium sulfate.
Claim 1 recites the limitation “inorganic compounds” in line 4. This language is indefinite because it is not clear if “inorganic compounds” refers to the magnesium chloride and magnesium sulfate that are instantly claimed or if “inorganic compounds” are in addition to the magnesium chloride and magnesium sulfate that are instantly claimed. In the interest of compact prosecution, the examiner interprets the phrase “inorganic compounds” to read on the instantly claimed magnesium chloride and magnesium sulfate in the instantly claimed range of 0.2 to 0.64 or 0.64 to 0.9.
Claim 1 recites the limitation “ the ratio” in line 4. This language is indefinite because it is not clear as to what ratio is being referred to with the limitation of “the ratio”.
Claim 2 recites the limitation “an inorganic compound of magnesium chloride and magnesium sulfate” in line 1. This language is indefinite because it is not clear how one inorganic compound can comprise two compounds such as magnesium chloride and magnesium sulfate. In the interest of compact prosecution, the examiner interprets the phrase “an inorganic compound of magnesium chloride and magnesium sulfate” to mean an inorganic composition comprising magnesium chloride and magnesium sulfate.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a product of nature without significantly more.
The claim(s) recite(s) An inorganic compound of magnesium chloride and magnesium sulfate, bound together into one substance, for manufacturing an agent for medical use, wherein a weight ratio of magnesium chloride to magnesium sulfate is 1.0:0.64, and inorganic compounds in which the ratio is 0.2 to 0.64 or 0.64 to 0.9 are also included in the one substance. Given the broadest reasonable expectation, the claims read on a natural product, seawater. This judicial exception is not integrated into a practical application because the claims encompasses seawater which includes magnesium chloride and magnesium sulfate in the ratios instantly claimed, therefore, the claim of claim 1 reads on seawater. The examiner points to Toriyama (JP2021176834A, Published 11/1/2021; cited in the IDS filed 04/15/2024), wherein Toriyama teaches magnesium chloride salt and magnesium sulfate salt are contained in seawater, and in the present invention, a composition was produced using a single agent of an over-the-counter drug and used as a sample, wherein 7.0 g of magnesium chloride hexahydrate and 2.1 g of anhydrous magnesium sulfate were dissolved in 1000 ml of water to prepare and use the same concentration as in seawater. The claim(s) does not include additional elements that are sufficient to amount to significantly more than the judicial exception because being manufactured for medical use doesn’t have a bearing on the chemical structure of the substance therefore, the claim does not recite any further structural limitations.
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.
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.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Toriyama (JP2021176834A, Published 11/1/2021; cited in the IDS filed 04/15/2024).
The claims are drawn to an inorganic compound of magnesium chloride and magnesium sulfate, bound together into one substance, for manufacturing an agent for medical use, wherein a weight ratio of magnesium chloride to magnesium sulfate is 1.0:0.64, and inorganic compounds in which the ratio is 0.2 to 0.64 or 0.64 to 0.9 are also included in the one substance.
Regarding claim 1, Toriyama discloses in claim 1, A magnesium salt composition (i.e., inorganic compound) containing magnesium chloride and magnesium sulfate, wherein the weight ratio of magnesium chloride to magnesium sulfate is 0.2-0.9 centered on 1.0: 0.635, or a magnesium salt composition as a bactericide. With regards to the limitation wherein the inorganic compound is for manufacturing an agent for medical use, the examiner points out that this limitation is a method step of an intended use of the inorganic compound to be used for medical use, as the claim is directed to the composition.
Regarding claim 2, Toriyama discloses in claim 2, A method for producing a magnesium salt composition (i.e., inorganic compound) as a bactericide for treating a disease of a person or as a bactericide, wherein the raw material is dissolved in water so that the weight ratio of magnesium chloride to magnesium sulfate is 1.0: 0.635, and then packed in a soft capsule or the like.
Accordingly, Toriyama anticipated the claimed invention.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AFUA BAMFOAA BOATENG whose telephone number is (703)756-1358. The examiner can normally be reached Monday - Friday 9:00am - 5:00pm.
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AFUA BAMFOAA BOATENG Examiner, Art Unit 1617
/ALI SOROUSH/ Supervisory Patent Examiner, Art Unit 1614