DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. The amendment filed April 29, 2026 has been received and entered. The text of those sections of Title 35, U.S. Code, not included in this action can be found in a prior Office action. Any rejection set forth in a previous Office action that is not specifically set forth below is withdrawn.
3. Claims 47-52 and 54-63 are pending.
Election/Restrictions
4. In the reply filed on November 5, 2025, applicant elected Group I, now claims 47-52 and 63, and “Combination 10” for the species without traverse. The claims have been amended to read on the elected species.
5. Claims 54-62 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
6. Claims 47-52 and 63 are examined on the merits.
Withdrawn Rejections
7. Applicant’s amendment filed April 29, 2026 has overcome the 112(a) rejection set forth at paragraph 7 of the previous Office action.
8. The 101 rejection set forth at paragraph 8 of the previous Office action is withdrawn in light of the data shown in Figures 1 and 3 which indicate that the combination of the claimed extracts produces a composition with a markedly distinct characteristic in comparison with the individual extracts.
Claim Rejections - 35 USC § 103
9. Claim(s) 47-52 and 63 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimizu (KR 20040010390 A – 1/31/2004 – English translation), Yu (KR 101627065 B1 – 6/2/2016 – English translation), Gopinathan (US 2009/0263514), and Li (CN 102552789 A – 7/11/2012 – English translation) for the reasons set forth in the previous Office action.
All of applicant’s arguments regarding this ground of rejection have been fully considered but are not persuasive. Applicant argues:
The Examiner indicates that the cited references recite various compositions for treating
flu. Applicant submits that flu is not the same as a coronavirus. None of the cited references, alone or in any combination, disclose or even suggest that the extracts in those references are useful for treating coronavirus infection, particularly by suppression of a coronavirus protease and/or inhibition of a cytokine storm in an individual exposed to the coronavirus as recited in claim 63. Claims 49-52 recite additional effects of the claimed combination that are also not disclosed or suggested in the cited references.
However, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant also argues:
One of ordinary skill in the art would not be led by the teachings of the cited references to
the instant claimed invention without guidance from the Applicant's own specification. There is no motivation in the cited references to combine them to treat coronavirus infection. The Examiner used the roadmap of the Applicant's own disclosure to backtrack to references claiming individual extracts for treating flu and then combined them to piece together the combination that was not previously known to provide the claimed effects.
In Virtek Vision International ULC V. Assembly Guidance Systems, Inc., 97 4th 882, 2024 USPQ2d 572 (Fed. Cir. 2024), the Federal Circuit reinforced the requirement that there must exist a motivation to combine prior art references for it to have been obvious to one of ordinary skill in the art to make the claimed invention.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, since each extract was known individually to be used for the treatment of the same illness, i.e. flu, an artisan would be motivated to combination the extracts together (see MPEP section 2144.06).
In addition, applicant argues:
In this instance, the Examiner asserts that individual extracts were known to be useful for
treating flu, so there is a motivation to combine them for treating coronavirus infection. The Examiner states, "No patentable invention resides in combining old ingredients of known properties where the results obtained thereby are no more than the additive effect of the ingredients." Applicant respectfully submits that the claimed properties of depressing coronavirus proteases or inhibiting cytokine storms of the combination of extracts were not known properties of the extracts prior to the inventors' own research and certainly were not disclosed in any of the cited references. Absent any teaching that any of the extracts alone were useful in treating coronavirus infection, there is no motivation in the prior art for combining them to treat coronavirus infections. A reason for combining the references for treating coronavirus infection simply did not exist prior to the filing of this application.
However, applicant claims are directed to composition claims rather than method of treatment claims. The fact that applicant intends to use the composition for a purpose other than that taught in the references does not create a patentable distinction unless the composition taught by the combination of the references would not be capable of carrying out the intended use. As discussed in MPEP section 2145(II), ‘Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention…"The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).’ Thus, applicant’s arguments in regards to the intended use differing from the prior art are not persuasive.
10. No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Susan Hoffman whose telephone number is (571)272-0963. The examiner can normally be reached M-Th 8:30am - 5:00pm.
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, 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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/SUSAN HOFFMAN/Primary Examiner, Art Unit 1655
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