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 Claims 2 and 5-8 are withdrawn.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.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted on 1/19/2024 was considered by the Examiner.
Priority
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. However, application 17/365,602 does not have direct support for preventing or treating a fibrotic condition with ovatodiolide. Therefore, the effective filing date of the instant application is 1/19/2024.
Election/Restrictions
Applicant's election with traverse of Group I and the species of ovatodiolide in the reply filed on 4/15/2026 is acknowledged. The traversal is on the ground(s) that “ovatodiolide” should have been a listed species. Examiner allows “ovatodiolide” to be an elected species and moves forward with the prosecution.
Claims 1, 3-4 and 9 embrace Applicant’s elected species and are therefore under examination. The elected species is not allowable.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2 and 5-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/15/2026.
Claim Objections
Claim 4 is objected to because of the following informalities: In line 1, place a comma in between “claim 1” and “wherein”. Appropriate correction is required.
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 Lien et al. (US20110319485).
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
Lien discloses the following in claims 9 and 13:
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.
Ascertainment of the differences between the prior art and the claims. (See MPEP § 2141.02)
The prior art fails to specifically disclose preventing a fibrotic condition in a subject.
Finding of prima facie obviousness --- rationale and motivation (See MPEP § 2142-2143)
Regarding instant claims 1, 3-4, and 9, the methods are drawn to “preventing” a condition in a subject wherein all subjects are applicable as may possibly be developing a fibrotic condition. Therefore, the specific condition (i.e. renal or pulmonary fibrosis) is not required because the claims are drawn to “preventing”. The administration of ovatodiolide would have been obvious to a skilled artisan, as such administration was previously demonstrated to be successful at killing Helicobacter pylori (a cause of gastric ulcers), which is embraced by any subject in the prevention of the fibrotic condition. A PHOSITA would have been motivated to administer ovatodiolide to various subjects, such as for the need of killing Helicobacter pylori, with a reasonable expectation of success in preventing another condition that any subject may acquire.
Conclusion
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 at 571-272-1310. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGHAN C HEASLEY/Examiner, Art Unit 1626
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