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 .
Priority
The instant application was filed 11 January 2024 and is the national stage entry of PCT/TR2022/050581 filed 13 June 2022. The effective filing date of the instant application is therefore 13 June 2022.
Examiner’s Note
The Applicant's amendments and arguments filed 16 June 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections
not reiterated from previous office actions are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant’s response, filed 16 June 2026, it is noted that claims 1 and 2 have been amended and no new claims have been added. Support for the amendments can be found from the instant claims. No new matter has been added.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 depends from claim 1 and recites “LuBO3,” which appears to be the chemical formula of or synonymous with lutetium borate (instant specification, pg. 4). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 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) 1 and 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Keiichiro (JP 2020111547 A; machine translation cited) and Hussein (WO 2022040799 A1).
Regarding claim 1, Keiichiro teaches an antiviral pharmaceutical composition (abs) comprising lutetium salt in a solvent (medium), such as water (pg. 3, para. 6), to inactivate norovirus (pg. 1, para. 2; pg. 2, para. 6; entire teaching). The limitation of “for providing an antiviral effect against DNA and RNA viruses on infected cells, wherein the DNA and RNA viruses comprise Adenovirus, Poliovirus, Herpes Simplex Type 1, Herpes Simplex Type 2, Coronvirus, and Norovirus” is also interpreted as a functional limitation, as well as intended use for “infected cells” (see MPEP 2111.02(II)). Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (see MPEP 2112.01 (II)).
Keiichiro does not specifically teach Vero cells in claim 1 or LuBO3 in their composition in claim 2.
Hussein teaches an antimicrobial composition comprising metal borates (pg. 1, ln. 35). Metal borates with other fillers, such as functional fillers, may have a synergetic effect and increase the antimicrobial efficacy (pg. 12, lns. 15-18). Lutetium borate appears to be the chemical formula of or synonymous with LuBO3 (instant specification, pg. 4). Hussein provides examples using Vero cell lines (pg. 71, ln. 16).
Since Keiichiro does not specifically teach Vero cell lines in claim 1 or LuBO3 in their composition for claim 2, one of ordinary skill in the art would have been motivated to use Hussein’s teaching of metal borates and Vero cell lines, which is interpreted to include lutetium borate, in order to increase the antimicrobial effectiveness of Keiichiro’s composition. A skilled artisan would have been led to combine the teachings to improve Keiichiro’s antiviral composition using lutetium salt, with specifically lutetium borate, in order to favorably enhance the antimicrobial activity of their composition. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).”
Response to Arguments
Applicant's arguments filed 16 June 2026 have been fully considered but they are not persuasive.
The 102 U.S.C. rejection for claim 1 and 103 U.S.C. rejection for claim 1 over Keiichiro have been withdrawn following Applicant’s amendments and the arguments against them will not be addressed.
The Applicant argues hindsight selection from multiple broad disclosures (Remarks, pg. 9).
Applicant’s argument is not found persuasive. 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).
The Applicant argues that Hussein teaches multiple different borate sources but does not disclose lutetium borate (Remarks, pg. 10).
Applicant’s argument is not found persuasive. Lutetium is interpreted as a metal (evidenced by engineering.purdue.edu, pg. 1). Therefore, Husein’s teaching of a metal borate is interpreted as including lutetium borate. Art is art, not only for what it expressly teaches, but also for what it would reasonably suggest to the skilled artisan, including alternative or non-preferred embodiments (see MPEP § 2123).
The Applicant argues that Hussein does not teach that a borate counterion would improve Keiichiro’s composition and that there is no rationale to combine the teachings (Remarks, pg. 10).
Applicant’s argument is not found persuasive. Since Keiichiro does not specifically teach Vero cell lines in claim 1 or LuBO3 in their composition for claim 2, one of ordinary skill in the art would have been motivated to use Hussein’s teaching of metal borates and Vero cell lines, which is interpreted to include lutetium borate, in order to increase the antimicrobial effectiveness of Keiichiro’s composition. A skilled artisan would have been led to combine the teachings to improve Keiichiro’s antiviral composition using lutetium salt, with specifically lutetium borate, in order to favorably enhance the antimicrobial activity of their composition. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).”
The Applicant argues that a skilled artisan would not have been motivated to modify Keiichiro’s teaching based on Hussein’s teaching (Remarks, pgs. 12-13).
Applicant’s argument is not found persuasive. It is reminded that to properly teach away, as is suggested by Applicant’s argument regarding the intended functionality of the teachings, the prior art reference must criticize, discredit, or otherwise discourage the solution sought. Merely teaching alternatives does not do this (see MPEP 2145 (X)(D)).
The Applicant argues that modifying Keiichiro’s teaching would change their principle of operation (Remarks, pg. 14).
Applicant’s argument is not found persuasive. It is noted that both Keiichiro’s teachings antimicrobial compositions capable of spraying (Hussein, pg. 5, ln. 18 and Keiichiro, abs). Furthermore, the Applicant is erroneously pointing to narrow embodiments expressly disclosed within the prior art reference as representing the sum total of information conveyed by each. Art is art, not only for what it expressly teaches, but also for what it would reasonably suggest to the skilled artisan, including alternative or non-preferred embodiments (see MPEP § 2123).
The Applicant argues that the claimed invention identified a problem not recognized by the teachings (Remarks, pgs. 16-17).
Applicant’s argument is not found persuasive. Both Keiichiro and Hussein teach antimicrobial compositions, where a skilled artisan would have been motivated to combine the teachings to arrive at the claimed invention. A skilled artisan would have been led to combine the teachings to improve Keiichiro’s antiviral composition using lutetium salt, with specifically lutetium borate, in order to favorably enhance the antimicrobial activity of their composition. “Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07).”
Conclusion
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.
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/D.A.K./Examiner, Art Unit 1613
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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