DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicant’s election without traverse of Group I in the reply filed on June 25, 2026 is acknowledged.
3. The election of species is withdrawn. The full scope of the elected claims was searched and examined.
Information Disclosure Statement
3. The information disclosure statements submitted on July 15, 2024 were in compliance with the provisions of 37 CFR 1.97 and 37 CFR 1.98. The statements were considered. Signed copies of form 144 9 are enclosed herewith.
Claim Objections
4. Claim 13 objected to for being dependent on a base withdrawn claim.
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.
5. Claim 2 recites the limitation "wherein the total impurity level is less than 1.5%." There is insufficient antecedent basis for this limitation in the claim. The independent claim recites an impurity level with units of wt.%.
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.
6. Claim(s) 1-7 and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Land et al. The reference has a date of 1988 which antedates the present claims having a filing date of January 31, 2024 and priority claim to provisional application dated November 7, 2023.
Determining the scope and contents of the prior art
The reference teaches a composition comprising
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in an aqueous solution.
Ascertaining the differences between the prior art and the claims at issue
The reference does not state the purity of the tin protoporphyrin that contains less than 1.0 wt% and a total impurity level below 3 wt%.
Resolving the level of ordinary skill in the pertinent art - considering objective evidence present in the application indicating obviousness
MPEP 2144.04 provides guidelines for the examination of applications and rationales for supporting an obviousness rejection.
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Thus, the claims to a composition of
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with a certain purity do not impart patentability to the claims based on the teaching of the composition itself. The skilled artisan has the motivation to employ purification methods that are known in the art to obtain purer compositions that have the same utility. The purifications are within the level of ordinary skill in the art. For this reason, it has been determined that the present claims are prima facie obvious over the prior art.
Conclusion
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/SUN JAE YOO/Primary Examiner, Art Unit 1621
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