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 .
DETAILED ACTION
Information Disclosure Statement
The information disclosure statements (IDS) filed on 04/30/2025 and 05/07/2024 have been considered here.
Status of Claims
Claims 1-8 are now pending and will be examined on the merits herein.
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.
Claims 1-5 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Matsunaga (2020; as submitted on IDS of 05/07/2024) in view of Su (2012; as submitted on IDS of 04/30/2025).
In regards to claims 1-3, Matsunaga teaches a method of forming a composition comprising mixing bicyclo[1.1.1]pentane with halogen atoms (i.e., iodine) in positions R1 and R2 of general formula (1) (see Matsunaga, paragraph bridging pages 2578-2579) with alpha cyclodextrin (see Matsunaga, Figure 1).
The teachings of Matsunaga are silent on the use of an organic solvent and water mixture.
Su teaches a method of forming a borneol (NB) (i.e., a bicylic compound) and β-cyclodextrin (β-CD) complex using a water and ethanol mixture (see Su, page 659, preparation of NB/ β-CD inclusion complex).
In regards to claims 4-5 and 7-8, the NB was dissolved in 20mL of ethanol and the β-CD was dissolved in 100mL of distilled water, which was then mixed together (see Su, page 659, preparation of NB/ β-CD inclusion complex). The organic solvent in this case would be about 16.66% by volume. MPEP 2144.05 states that "[i]n the case where the claimed ranges 'overlap or lie inside ranges disclosed by the prior art' a prima facie case of obviousness exists" quoting In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
In regards to claims 1-5 and 7-8, it would have been prima facie obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the teachings Matsunaga and Su to formulate the instant method as both references are drawn toward making complexes comprising cyclodextrin and bicyclic molecules using similar methods. It would be obvious to one with ordinary skill in the art to combine the methods of Matsunaga with Su according to known methods of making complexes using mixtures of organic solvents and water (see Su, page 659, preparation of NB/ β-CD inclusion complex) to yield predictable results with a reasonable expectation of success. One with ordinary skill in the art would be motivated to combine prior art elements according to known methods to yield predictable results.
Allowable Subject Matter
The limitation of wherein the mixing of the bicycloalkane compound and the cyclodextrin compound is carried out in a state in which light having a wavelength of 400 nm or less is shielded seems to be free of the art at the time. Further it is noted that in Matsunaga, there is reason to use UV light in the method, rather than shield the mixture from it, as UV irradiation resulted in the rapid and complete formation of the encapsulated composition (see Matsunaga, page 2580, column 2, paragraph 2).
As such, claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
No claims allowed.
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/Isis A Ghali/Primary Examiner, Art Unit 1611
/A.A.A./Examiner, Art Unit 1611
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