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
Priority and Status of the Claims
1. This application is a 371 of PCT/EP2022/064876 06/01/2022, which claims benefit of the foreign application: NORWAY NO20210693 06/02/2021.
2. Claims 1-14 are pending in the application.
3. 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 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.
Claim Rejections - 35 USC § 103
4. The following is a quotation of 35 U.S.C. 103(a) 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(f) or (g) prior art under 35 U.S.C. 103(a).
Claims 11 and 14 rejected under 35 U.S.C. 103(a) as being obvious over
Helsing et al. WO 2017/160156.
Applicants claim a kit comprising i) the compound according to claim 1, i.e.,
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214
466
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, wherein Ar is aryl group, X is O or S, R’ and R are hydrogen or alkyl, and ii) an inhaler, see claim 11.
Applicants claim a kit comprising i) the composition according to the compound of formula (II), i.e.,
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214
466
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, and ii) an inhaler, see claim 14.
Determination of the scope and content of the prior art (MPEP §2141.01)
Helsing et al. ‘156 discloses a pharmaceutical composition comprising a
compound of formula (1), i.e.,
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88
244
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, wherein R is alkyl, aryl or phenylthiol, or the compound
of formula (1) is phenylcapsaicin, see claims 1-3 on page 12.
Determination of the difference between the prior art and the claims (MPEP §2141.02)
The difference between instant claims and Helsing et al. ‘156 is that the instant claims are embraced within the scope of Helsing et al. ‘156. Helsing et al. ‘156 compounds/compositions read on the instant compound/compositions in claims 11 and 14. It is noted that a formulation inhaler is pharmaceutical industry routine for preparation of a known compound.
Finding of prima facie obviousness-rational and motivation (MPEP §2142-2143)
One having ordinary skill in the art would find the claims 11 and 14 prima facie obvious because one would be motivated to employ the compounds/compositions of Helsing et al. ‘156 to obtain instant invention.
The motivation to make the claimed compounds/compositions derived from the known compounds/compositions of Helsing et al. ‘156 would possess similar activity to that which is claimed in the reference.
5. Claims 1-10 and 12-13 are neither anticipated nor rendered obvious over the record, and therefore are allowable.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to REI TSANG SHIAO whose telephone number is
(571)272-0707. The examiner can normally be reached on 8:30 am-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Claytor can be reached on 571-272-8394. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REI TSANG SHIAO/
Rei-tsang Shiao, Ph.D.Primary Examiner, Art Unit 1691
January 21, 2026