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 .
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huang Hexing (CN115969889A).
Regarding claims 1 and 4, Hexing discloses an application of the extract of the fruiting body of cordyceps militaris is characterized in that the extract is used for preparing a medicine for improving the blue light damage resistance effect; wherein the extract of the Cordyceps militaris sporocarp (aka fruiting body) is obtained by extracting a Cordyceps militaris sporocarp sample by using an ethanol water solution (see claim 1). With the broadest reasonable interpretation an ethanol aqueous extract would also be an ethanol extract when so broadly claimed as they both include ethanol. Hexing discloses orally administering the composition (see claims 6-8). Hexing does not disclose that the method is for alleviating dry eye disease, however discloses that the method is for improving damage caused to the eyes from blue light, which is known to cause dry eyes as a symptom and thus the patient populations would be the same. Additionally, the administration of the same ethanol extract of the fruiting bodies of the same species of fungi would inherently have the same effects.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Huang Hexing (CN115969889A) and Wei Chih-Hao (TW201932122A).
Regarding claims 1 and 4, Hexing discloses an application of the extract of the fruiting body of cordyceps militaris is characterized in that the extract is used for preparing a medicine for improving the blue light damage resistance effect; wherein the extract of the Cordyceps militaris sporocarp (aka fruiting body) is obtained by extracting a Cordyceps militaris sporocarp sample by using an ethanol water solution (see claim 1). With the broadest reasonable interpretation an ethanol aqueous extract would also be an ethanol extract when so broadly claimed as they both include ethanol. Hexing discloses orally administering the composition (see claims 6-8). Hexing does not disclose that the method is for alleviating dry eye disease, however discloses that the method is for improving damage caused to the eyes from blue light, which is known to cause dry eyes as a symptom and thus the patient populations would be the same. Additionally, the administration of the same ethanol extract of the fruiting bodies of the same species of fungi would inherently have the same effects.
Chih-Hao teaches that an ethanol extract of Cordyceps militaris is used for preparing eye-protection compositions (see abstract) and teaches that the extract is from the fruiting bodies (see page 3, para. 1-3) and teaches the composition is for treating dry eye syndrome (see page 4, para. 2-4).
Therefore it would have been obvious to persons having ordinary skill in the art and before the effective filing date to use the invention taught by Hexing and/or Chih-Hao for a method of treating dry eye because that is exactly what the inventions are directed to. The same administration of the same components and to the same patient population would ultimately have the same effects. Additionally, it would have been obvious to use the method of treating dry eyes for the causes listed in claims 2 and 3 because Chih-Hao teaches the use of the same composition for treating dry eye syndrome and it is not so limited to any particular cause. The benefits of treating dry eyes would be made obvious to use for different causes of dry eyes because the symptom which is dry eye is the same in each case.
There would have been a reasonable expectation of success in arriving at the instant invention given the prior art because both pieces of art are directed to the ethanol extracted Cordyceps militaris compositions which are given as a composition to protect eyes and to treat dry eyes.
Conclusion
No claims are allowed.
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JACOB A BOECKELMAN Examiner, Art Unit 1655
/TERRY A MCKELVEY/ Supervisory Patent Examiner, Art Unit 1655