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 .
Claims 1-11 are pending in the instant application. Claims 10 and 11 are rejected. Claims 1-9 are allowed.
Information Disclosure Statement
The information disclosure statement filed on April 2, 2024 has been considered and a signed copy of form 1449 is enclosed herewith.
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 10 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR 2017024522 A.
KR 2017024522 A discloses the compound (I) or 2-phenylamino-benzooxazol-5-ol, for example, which can be useful in a health food composition (see English translation of the abstract). Therefore, a health functional food composition for preventing or improving chronic kidney disease and a food composition for preventing or improving chronic kidney disease, comprising a compound represented by Chemical Formula 1 wherein L1 is a single bond, R1 is -OH, R2 is -H, and R3-R7 are -H of the claims are anticipated by the reference.
With respect to the art rejection above, it is noted that the reference does not teach that the composition can be used in the manner instantly claimed (i.e., for preventing or improving chronic kidney disease). However, the intended use of the claimed compositions does not patentably distinguish the compositions, per se, since such disclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed compositions and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 10 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 and 9 of copending Application No. 18/553,414 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons given below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Copending Application No. 18/553,414 claims a health functional food composition and a food composition for preventing or improving neurodegenerative disease, comprising a compound represented by the same Chemical Formula 1 or a pharmaceutically acceptable salt thereof as is used in the health functional food composition and food composition for preventing or improving chronic kidney disease of the instant claims. Since the intended use of the claimed compositions does not patentably distinguish the compositions, per se, since such disclosed use is inherent in the reference compositions. In order to be limiting, the intended use must create a structural difference between the claimed compositions and the prior art compositions. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting. Therefore, the health functional food composition and food composition claimed in the reference anticipate those of the instant claims.
Allowable Subject Matter
Claims 1-9 are allowed. No prior art was found.
The closest prior art is WO 2016/176473 A1 which discloses compounds, such as compounds of structural Formula I (see claim 1), II (see claim 2) and III (see claim 4), that are useful for the treatment of renal conditions (see abstract). The reference does not disclose using a compound which fits within the scope of those used in the method of the claims nor does it disclose an obvious variant (i.e., L1 in the compounds of instant Chemical Formula 1 is a single bond or
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTIN ANN VAJDA whose telephone number is (571)270-5232. The examiner can normally be reached Mon-Fri 6:00-4:00.
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/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622