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
This application, filed 03/27/2024 is a National Stage entry of PCT/US22/45238, International Filing Date: 09/29/2022; and Claims Priority from Provisional Application 63249879, filed 09/29/2021.
Status of Claims
Claims 1-2, 10-11, 16-17, 20-21, 24-28, 33-35, 37, 47-48, 54, and 56 are pending as of the response filed on 8/7/26. Claims 3-9, 12-15, 18-19, 22-23, 29-32, 36, 38-46, 49-53, 55, and 57-65 have been canceled.
Applicant’s election without traverse of invention I, and the species shown below in the reply filed on 8/7/26 is acknowledged:
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. Applicant has stated the elected species reads on claims 1-2, 10-11, 16-17, and 24-26.
Claims 20-21, 27-28, 33-35, 37, 47-48, 54, and 56 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/7/26.
The elected species shown above has been found to be free of the prior art. Therefore, search and examination were extended to other species of formula (I) as discussed in the action below, with the understanding it was not unnecessarily extended to the full scope of the claimed species, in accordance with MPEP 803.02.
Claims 1-2, 10-11, 16-17, and 24-26 were examined and are rejected.
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 1-2, 10-11, 16-17, and 24-26 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 drawn to compounds which are found in plants, and the claims are therefore directed to a natural product, i.e., a judicial exception without significantly more. The claim(s) recite(s) compounds that are present in various plants. See Cheng et. al., Fitoterapia, vol. 141, pp. 104344 (1-5), publ. 8/26/2019 (title & abstract; p. 2, Fig. 1, see compounds 9 & 11); and Feng et. al., Nat. Products Comm., vol. 15(7), pp. 1-4, publ. July 2020 (title & abstract; p. 2, Fig. 2, compound 4). This judicial exception is not integrated into a practical application because the claims are drawn to naturally occurring compounds, and a pharmaceutical composition comprising the naturally occurring compounds, without significantly more. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claimed compounds are identical to those compounds present in plants and therefore possess the same characteristics. The pharmaceutical composition of claim 26 doesn’t amount to significantly more than the judicial exception because there is no evidence of record the addition of any pharmaceutical carrier to the naturally occurring compounds significantly impacts the characteristics of the compounds.
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) 1-2, 10-11, 16-17, and 24-25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nascimento et. al., Phytochemistry, vol. 52, pp. 345-350, publ. 1999.
Nascimento discloses the synthesis of the compounds shown below (title & abstract; p. 346, Scheme 1; p. 348, see para 3.5):
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.
The compounds are included within formula (I) of the instant claims, defined accordingly:
R1=CHO (2 and 2a) and propenyl (1a); R2, R3, R4, R5, and R6= all hydrogen; and R7=methyl (1a and 2a) and hydrogen (2). Nascimento therefore anticipates the claims.
Claim(s) 1-2, 10-11, and 24-25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cheng et. al., Fitoterapia, vol. 141, pp. 104344 (1-5), publ. 8/26/2019.
Cheng et. al. discloses isolation of the following compounds from the plant Saururus chinensis (title & abstract; p. 2, Fig. 1, see compound 11):
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. The compound is included within formula (I) as defined accordingly: R1=CHO (11); R7=hydrogen; R2, R3, R4, R5, and R6=all hydrogen. Cheng therefore anticipates the claims.
Claim(s) 1, 10-11, 24, and 26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Feng et. al., Nat. Products Comm., vol. 15(7), pp. 1-4, publ. July 2020.
Feng discloses the compound shown below as an isolate from the plant Acanthopanax senticosus (title & abstract; p. 2, Fig. 2, compound 4):
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. The compound is included within formula (I) as defined accordingly: R1=CHO (11); R7=hydrogen; and R2, R3, R4, R5, and R6=all hydrogen. Feng further discloses compound 4 was dissolved in dimethylsulfoxide (DMSO) for cytotoxicity testing (p. 3, right col., last para-p. 4, left col., top para), which is a pharmaceutically acceptable carrier. Feng therefore anticipates the claims.
Information Disclosure Statement
The IDS filed on 3/27/24 has been considered.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH PIHONAK whose telephone number is (571)270-7710. The examiner can normally be reached Monday-Friday 9:00-5:30 EST.
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SARAH . PIHONAK
Primary Examiner
Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627
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