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 1-89 are pending.
Claim Objections
Claims 5-17, 21-31, 36-45, 50-57, 61-76, 81-89 are objected to under 37 CFR 1.75(c) as being in improper form because various multiple dependent claims respectively. See MPEP § 608.01(n). For the reason of compact prosecution, these claims are treated as if they are depending from the broadest claims respectively.
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 30, 31, 44, 56, 75, and 88 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to a use of a compound, which is not one of the four categories of patent eligible subject matter.
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 30, 31, 44, 56, 75, and 88 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claims recite the use of the herein claimed compounds; however, there is no active steps recited in the claims. Therefore, the claims are considered indefinite since the metes and bounds of the claims are not clearly defined.
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.
Claim(s) 46 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 03271290 (‘290), English translation also provided. JP 03271290 is reference of record from IDS filed 7/8/2024.
‘290 teaches the compound of formula (II) that reads on the compound of formula II in the instant case when Z is -COOR where R is a lower alkyl (see the claim).
Claim Rejections - 35 USC § 103
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.
Claim(s) 18-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 110372713 (‘713), English translation is provided in view of CN 103073555 (‘555), English translation is provided. Both references are of record in IDS filed 7/8/2024.
‘713 teaches a method of purifying pranoprofen. So that the pranoprofen composition would contain less than 0.1% of impurities (see Third paragraph under Background Technique section).
‘713 does not expressly teach the impurities as Impurities A or C.
‘555 teaches pranoprofen can be degraded into impurities A and C via air and light (see [0004]-[0006]).
It would have been obvious to one of ordinary skill in the art at the time of filing to purify pranoprofen and to keep any impurities, including impurities A and C, below 0.1%.
One of ordinary skill in the art would have been motivated to purify pranoprofen and to keep any impurities, including impurities A and C, below 0.1%. Since the standard for the impurities content is less than 0.1%, purifying the pranoprofen composition to have less than 0.1% of impurities, including impurities A and C (as produced by the degradation process) would have been obvious.
Allowable Subject Matter
Claims 1-4, 32-35, 47-49, 58-60, 77-80 are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAN MING R HUI whose telephone number is (571)272-0626. The examiner can normally be reached Mon - Fri 9:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney Klinkel can be reached at 571-270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAN MING R HUI/ Primary Examiner, Art Unit 1627
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