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 1-9 are pending. Claims 2 and 5-8 are withdrawn. Claims 1, 3-4, and 9 are rejected.
Response to Amendments/Arguments
The objection of claim 4 because of a missing comma has been overcome by the comma added in 8/7/2026 amendments.
Applicant’s amendments, particularly deletion of “preventing” from the instant claims, filed 8/7/2026, with respect to the rejection(s) of claim(s) 1, 3-4, and 9 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn and Applicant remarks from the same date will not be addressed. However, a novel rejection is presented below, as necessitated by amendments.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. 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.
Claim(s) 1, 3-4, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (J. Nat. Prod., 2008, 71, 1207-1212), in view of Lu et al. (Life Sciences, 127, 2015, 59-65), and further in view of Jones et al. (eLife 2018, 7:e36354, 1-24).
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Chen et al. disclose ovatodiolide (compound 7) as an effective collagen inhibitor, see Table 4, p. 1209:
PNG
media_image1.png
194
473
media_image1.png
Greyscale
. Compound 7 (ovatodiolide) exhibited selective antiplatelet aggregation activities toward collagen (see abstract). Chen does not specifically link collagen inhibition to treating renal or pulmonary fibrosis.
Lu et al. disclose the following (see p. 59, Introduction, left column):
PNG
media_image2.png
144
523
media_image2.png
Greyscale
.
Jones et al. teach that excessive deposition of collagens is considered synonymous with fibrosis, including pulmonary fibrosis (see Introduction, p. 2, first two full para.).
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
There is not a single embodiment in the prior art of ovatodiolide treating renal or pulmonary fibrosis.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
Regarding instant claims 1, 3-4, and 9, it would have been obvious to one of skill in the art to treat both renal and pulmonary fibrosis with ovatodiolide with a reasonable expectation of success, prior to the effective filing date of the instant claims. The motivation to treat both renal and pulmonary fibrosis with ovatodiolide comes from:
Ovatodiolide inhibits collagen production (see Chen et al. Table 4);
Collagen product causes fibrosis, including renal and pulmonary (see Lu et al and Jones et al. supra).
It would have been predictable to treat different types of fibrosis with an effective amount of ovatodiolide by inhibiting collagen production.
Conclusion
Applicant’s amendments necessitated the new ground(s) of rejection presented in this Office Action. Accordingly, 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 extension fee 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 MEGHAN C HEASLEY whose telephone number is (571)270-0785. The examiner can normally be reached Monday - Friday 8:30-4:30 PM.
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, Amy Clark can be reached on 571-272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MEGHAN C HEASLEY/Examiner, Art Unit 1626
/KAMAL A SAEED/Primary Examiner, Art Unit 1626
Prosecution Insights