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 .
Response to Amendment
The amendment received on 12/03/2025 is acknowledged. Claims 1 has been amended. Claims 2-14 have been cancelled. Claims 17-19 have been added. Claims 1 and 15-19 are currently pending and have been treated on the merits.
In light of the amendment, the rejection of claims 1-14 under 35 U.S.C. 112(a) is withdrawn. The claims have been amended to recite compounds identified within the specification.
In light of the amendment to the claims, the rejection of claims 1-16 under 35 U.S.C. 112(b) is withdrawn. The limitation which rendered the claims indefinite has been removed.
Response to Arguments
Applicant’s arguments regarding the rejection of claims 1-16 under 35 U.S.C. 102(a)(1) by applicant’s admission has been fully considered and are persuasive in view of the amendment to the claims. The specification does not teach that the compound may be used to inhibit spore generation in vivo. This argument has been further supported by life cycle of Pneumocystis not undergoing classic spore formation and germination. This rejection is therefore withdrawn.
The rejection of claims 1-16 over the reference to Hughes is withdrawn for the same reasons.
A new grounds of rejection is presented below necessitate by applicant’s amendment.
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.
Claim 19 is 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.
Regarding claim 19 and the limitation “wherein the compound inhibits fungal spore germination by at least 70% relative to an untreated control”, it is unclear as currently worded what this limitation refers to. It is unclear if this is meant to be an amount of compound administered to cause this level of inhibition in vivo, or if applicant is claiming a property of a compound in regards to its effect at some concentration in some type of assay which has not been defined. It is unclear what the untreated control is if it is in reference to an amount administered as it is unclear how that would be determined.
The courts have indicated that before claimed subject matter can properly be compared to the prior art, it is essential to know what the claims do in fact cover. See, e.g., the following decisions: In re Steele, 305 F 2d. 859, 134 USPQ 292 (CCPA 1962); In re Moore 439 F 2d. 1232, 169 USPQ 236 (CCPA 1969); In re Merat, 519 F 2d. 1390, 186 USPQ 471 (CCPA 1975).
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.
Claims 1 and 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Po (GB2208598).
Regarding claim 1 and the limitation “A method of treating fungal infections in mammals, the method comprising administering to the mammal a spore germination- inhibiting concentration of a compound, and or salts thereof; wherein the compound is selected by from the group consisting of: bifonazole, econazole, isoconazole, tioconazole, miconazole, cetylpyridinium, domiphen, cetrimonium, alexidine, niclosamide, ibrutinib, everolimus, doxercalciferol, rapamycin, temsirolimus, ezetimibe, dequalinium, biperiden…andwherein the compound inhibits germination of fungal spores in vivo ” Po teaches the administration of compositions comprising miconazole for the purposes of treating fungal infections and teaches they are especially effective for treating Aspergillus niger and fumigatus (Abstract, Page 3 first three paragraphs, Page 4 first full paragraph, Claims 1-3).
As effective amounts of the antifungal composition comprising miconazole are being administered to treat fungal infections, the amount administered will be sufficient to inhibit spore germination of this fungus.
Regarding claims 17-19 and the limitations “wherein the fungal infection is caused by a spore-producing fungus of a genus selected from the group consisting of Histoplasma, Blastomyces, Aspergillus, Coccidioides, Sporothrix, Penicillium, and Cryptococcus”, “wherein the spore-producing fungus is a species selected from the group consisting of Histoplasma capsulatum, Blastomyces dermatitidis, Aspergillus fumigatus, Coccidioides immitis, Sporothrix schenkii, Penicillium marneffei, and Cryptococcus neoformans”, and “wherein the compound inhibits fungal spore germination by at least 70% relative to an untreated control”, Po teaches the administration of compositions comprising miconazole for the purposes of treating fungal infections and teaches they are especially effecting for treating Aspergillus niger and fumigatus (Abstract, Page 3 first three paragraphs, Page 4 first full paragraph, Claims 1-3). Further as the compound administered is the same as that claimed it will inherently have the same property of inhibiting germination by at least 70%.
Allowable Subject Matter
Claims 15-16 are 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.
Conclusion
No claim is allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES Z CONSTANTINE whose telephone number is (571)270-5533. The examiner can normally be reached Mon-Fri 9-5.
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/CHARLES Z CONSTANTINE/Examiner, Art Unit 1657
/ROBERT J YAMASAKI/Primary Examiner, Art Unit 1657