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 .
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-6, drawn to a method for
Preparing an anti-gout drug, in the reply filed on 01/20/2026 is acknowledged. Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention elected without traverse, there being no allowable generic or linking claim. The requirement is
still deemed proper and therefore made FINAL.
Pending claims 1-6 have been examined on the merits.
Drawings
The drawings were received on 02/04/2024. These drawings are accepted.
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 1-6 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.
The application method as claimed is drawn to a method for applying the active portion of the Ligusticum Chuanxiong to prepare an anti-gout drug. It is unclear whether it should be interpreted as a method of applying or a method of preparing the anti-gout drug. The claim is not clearly written as a method of preparing the anti-gout drug. At this time, the claims are being interpreted by the examiner as a method of preparing an anti-gout drug. Clarification is required.
All other claims depend directly or indirectly from the rejected claims and are, therefore, also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for the reasons set forth above.
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 1-6 are rejected under 35 U.S.C 102 (a)(1) as being anticipated by HONGBO (CN116650545A).
The claims are as of record, drawn to a method of applying an active portion of the Ligusticum Chuanxiong to prepare an anti-gout drug.
The reference Hongbo 545’ teaches the application of active parts of Ligusticum Chuanxiong in the preparation of anti-gout drugs. The reference teaches that the active part of the Ligusticum Chuanxiong is an ethyl acetate, it is obtained by extracting Ligusticum Chuanxiong with ethyl acetate. The ethyl acetate part contains small to medium polar lipophilic components and in the small to medium polar lipophilic components is the phthalide compound. The IC50 value of the ethyl acetate part for inhibiting xanthine oxidase is 18.25±0.19 μg/mL (see description para [009]).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis forbelieving that the products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658
(Fed. Cir.1990). Therefore, the prima facie case can be rebutted by evidence showing that the
prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Claim 1-3 and 6 are rejected under 35 U.S.C 102 (A)(1) as being anticipated by Man-Li (37901529 (2023)).
.
Man-li (2023) teaches the rhizome of Ligusticum Chuanxiong (Rhizoma Chuanxiong) has been used in the treatment of gout. The reference teaches that the ethyl acetate extracts of R. Chuanxiong showed comparable Xanthine Oxidase (XO) inhibiting activity (IC50 = 18.25 ± 0.19 μg/mL) to a methanol extract. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARNITIA T WALKER whose telephone number is (571)272-2550. The examiner can normally be reached Monday-Friday 8:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anand Desai can be reached at (571) 272-0947. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Marnitia T Walker/
Examiner, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
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