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 .
Non-Final Rejection
The Status of Claims:
Claims 1-10 are pending.
Claims 1-2, 4-10 are rejected.
Claims 3 and 6 are objected.
DETAILED ACTION
1. Claims 1-10 are under consideration in this Office Action.
Priority
2. It is noted that this application is a 371 of PCT/CN2022/083003 03/25/2022, which has a foreign priority document CHINA CN202110419576.1 04/19/2021.
Drawings
3. The drawings filed on 10/19/2023 were accepted by the examiner.
IDS
4. The IDS filed on 10/19/23 & 1/18/24 were reviewed by the examiner.
Claim Objections
Claims 3 and 6 are objected to because of the following informalities:
Claim 3 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.
In claim 6 , the limitation” the compound is selected from the group consisting of
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other compounds “ is recited.
This limitation seems improper because there are no commas among the listed compounds. Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 8-10 are rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPO 475 (D.D.C. 1966).
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 8-10 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 pre-AIA the applicant regards as the invention.
Claims 8-10 provide for the use of a pharmaceutical composition, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
.
5. Claim(s) 1-2 and 4-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated clearly by Sakakibara et al (Organic & Biomulecular Chemistly, Vol. 1, No. 14, 20 June 2003, pages 2474 -2485).
Sakakibara et al discloses the following compounds :
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ee page 2480, Fig.2 , compoun#6 & 7 )
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(see page 2480, Fig. 4 , compounds# 6-d3, 7, 7-d3)
These are identical with the claims.
Claim(s) 1-2, 4-5 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated clearly by Medarde et al (Arch. Pharm. (Weinheim) 328.640644 (1995)).
Meda rde et al discloses the compound with antitumoral activities and its pharmaceutical composition in the following :
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(see page 641, compound#3; page 642, Table 1, the preparation of compound#3 (+-) 3’,4’-O-Didemethylyatein (3) )
These are identical with the claims.
7. Claim(s) 1-2 and 4-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated clearly by Ragamustari et al (Plant Biotechnology 30, 375–384 , 2013).
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(see page 376, Fig 1 ), These are identical with the claims.
Claim Rejections - 35 USC § 103
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.
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 1-2, and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hu et al ((CN 102342929 A).
Determination of the scope and content of the prior art
Hu et al discloses arctigenin as shown in general formula (1) and its derivative in preparing medicaments for improving body tolerance (resisting fatigue), and pharmaceutical compositions containing arctigenin and its derivative for improving body tolerance (resisting fatigue) (see abstract).
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.
Hu et al discloses one of the exemplified compounds is as followed:
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(see page 3 , a paragraph#21, compound#1).
The current invention, however, differs from the prior art in that the moiety of the claimed compound is
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instead of
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of the prior art compound.
Ascertainment of the difference between the prior art and the claims
The difference between the current application and the applied Hu et al art is that the applied Hu et al art does not expressly teach the moiety of the claimed compound is
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instead of
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of the prior art compound.
Resolving the level of ordinary skill in the pertinent art.
Regarding the claims 1-2, and 4-7 with respect to the lack of disclosing a methyl group on the
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ring structure, the prior art is is silent . However, the distinction between the prior art and the claimed compound is hydrogen vs. methyl moiety; it is well-established that the substitution of methyl for hydrogen is a known compound is not a patentable modification absent unexpected or unobvious results. In re Wood, 582 F.2d 638, 199 U.S.P.Q. 137 (C.C.P.A. 1978); In re Hoke , 560 F. 2d 436, 195 U.S.P.Q. 148 (C.C.P.A. 1977). Furthermore, such a difference between the prior art and the claimed compound is a minor and can be expected to be prepared by the same method and to have generally the same or similar properties. This expectation is then deemed the motivation for preparing the methyl substituted compound. So, it would have been obvious to the skilled artisan in the art to be motivated to prepare the claimed compound as an alternative in the Hu et al method. This is because the skilled artisan in the art would expect such a selection and manipulation to be successful and feasible as guidance shown in the prior art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Hu et al expressly discloses one of the exemplified compounds is as followed:
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(see page 3 , a paragraph#21, compound#1).
Although the prior art does not teach a methyl group attached to the ring structure of 1-Oxacyclopentan-2-one, the distinction between the prior art and the claimed compound is hydrogen vs. methyl moiety; it is well-established that the substitution of methyl for hydrogen is a known compound is not a patentable modification absent unexpected or unobvious results. In re Wood, 582 F.2d 638, 199 U.S.P.Q. 137 (C.C.P.A. 1978); In re Hoke , 560 F. 2d 436, 195 U.S.P.Q. 148 (C.C.P.A. 1977). Furthermore, such a difference between the prior art and the claimed compound is a minor and can be expected to be prepared by the same method and to have generally the same or similar properties. This expectation is then deemed the motivation for preparing the methyl substituted compound. So, it would have been obvious to the skilled artisan in the art before the effective filing date of the claimed invention to be motivated to prepare the claimed compound as an alternative in the Hu et al method. This is because the skilled artisan in the art would expect such a selection and manipulation to be successful and feasible as guidance shown in the prior art.
Conclusion
Claims 1-2, 4-10 are rejected.
Claims 3 and 6 are objected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAYLOR V OH whose telephone number is (571)272-0689. The examiner can normally be reached 8:00-5:00.
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/TAYLOR V OH/Primary Examiner, Art Unit 1625 12/21/2025