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
This application claims benefit of foreign application CN202310465754.3, filed April 27, 2023. Claims 1-10 are pending in this application and examined on the merits herein.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because an “application” as described in the base claim 1 is not clearly directed to a particular statutory category of invention such as a process or composition of matter.
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.
Claims 2 and 6 are 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. Base claim 1 describes the compound typhaneoside, which is a specific chemical substance having a particular chemical formula. Dependent claim 2 contains as the only further limitations, an explicit recitation of the molecular formula and chemical structure of typhaneoside. Because these formulae merely recite necessary characteristics of the already defined compound typhaneoside, they therefore fail to further limit the scope of base claim 1. Claim 6 contains as its sole additional limitation the requirement that the composition be a solid, liquid, or gas. Since any pharmaceutically acceptable composition of matter must be a solid, liquid, or gas, this claim fails to further limit claim 1. 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 § 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 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yan et al. (Reference included with PTO-892)
Independent claim 1 is directed to an application of the chemical compound typhaneoside in preparation of a medicine. As discussed above under 35 USC 101, it is unclear what statutory category an “application” refers to. At the very least, these claims will be considered to be infringed either by a pharmaceutical composition or else by a process of manufacturing a pharmaceutical composition. Claim 7 and its dependent claims are directed to a drug for a particular intended purpose, which is a composition of matter comprising a particular active ingredient. In both cases, the recitation of an intended use such as “uric acid lowering” or “for treating hyperuricemic kidney injury,” are seen to be intended uses of the recited medicine or drug composition, and would be infringed by any composition that is usable for the recited intended use, whether or not the reference describing said composition actually describes the same intended use for the composition.
Yan et al. discloses a complex of typhaneoside in a complex with a tetrahedral framework nucleic acid, (TTNA) which has an improved bioavailability and stability. (p. 8769 right column last paragraph – p. 8771 left column first paragraph) In an animal study, this complex was administered to experimental animals as a solution in normal saline. (p. 8778 left column, “Animal Models and Treatments.”) Preparing this injectable solution is reasonably considered to be “application” of typhaneoside in preparation of a medicine as recited in present claim 1, and the injectable composition itself is reasonably considered to be a drug as recited in present claims 7 and 9. Regarding claim 2, as discussed under 35 USC 112(d) this claim does not further limit the scope of base claim 1, and is therefore also anticipated for the same reasons. Regarding claims 3, 4, and 7-10 the saline in which the typhaneoside TFNA complex is dissolved is reasonably considered to be a medically acceptable carrier or diluent. Regarding claim 6, the dosage form is a liquid. Regarding claim 5, a recitation of the intended use of the drug does not differentiate the claim from the prior art as it does not correlate with any objective structural feature of the composition.
For these reasons Yan et al. anticipates the present claims.
Conclusion
No claims ae allowed in this action.
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/ANDREA OLSON/ Primary Examiner, Art Unit 1693 8/17/2026
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