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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 16-29) in the reply filed on 22 July 2026 is acknowledged.
Claims 30-35 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 22 July 2026.
Applicant’s election without traverse of species of UPR inhibitor of formula I of γ-mangostin in the reply filed on 22 July 2026 is acknowledged.
Species of UPR inhibitor of formula I other than γ-mangostin are withdrawn from further consideration pursuant to MPEP 803.02(III) as being drawn to a nonelected species. Election was made without traverse in the reply filed on 22 July 2026.
Claims 16-29 are under current consideration.
Claim Objections
Claim 25 is objected to because of the following informalities: the phrase “at least one” is repeated in line 2; and the phrase “at least one” is also repeated in line 3. Appropriate correction is required.
Claim 27 is objected to because of the following informalities: a comma is missing after the term “coptisin” in line 2. Appropriate correction is required.
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 16-29 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.
Claim 16 recites the limitation "the phytopathogenic fungal strain cultures" in line 7. There is insufficient antecedent basis for this limitation in the claim. Claims 17-29 are rejected as depending upon claim 16 without remedying such deficiency.
Claim 16 requires one of six specific species of xanthone/compound of formula I, but the fifth such species fails to specify R2 yet indicates demethlyrubraxanthone in parentheses thereafter, resulting in confusion as to whether such fifth species is the broader (without R2 specified) or narrower limitation (demethlyrubraxanthone). Moreover, a lack of specificity of R2 itself also renders the claim indefinite, and reciting demethlyrubraxanthone in parentheses itself also renders the claim indefinite as it is unclear whether such recitation is required. Claims 17 and 20-29 are rejected as depending upon claim 16 without remedying such deficiency.
Claim 16 requires one of six specific species of xanthone/compound of formula I, but the sixth such species specifies R2 as prenyl and R3 as OH yet also contradictorily specifies that R2 and R3 form a 2,3,3-trimethyltetrahydrofuran ring, such that the nature of R2 and R3 are unclear, rendering the claim indefinite. Claims 17 and 20-29 are rejected as depending upon claim 16 without remedying such deficiency.
Claim 16 recites the limitation "the plant defense molecules" in the last line. There is insufficient antecedent basis for this limitation in the claim. Claims 17-29 are rejected as depending upon claim 16 without remedying such deficiency.
Regarding claim 22, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 25 recites the limitation "the non-fungicidal concentration C2" in line 5. There is insufficient antecedent basis for this limitation in the claim. Claims 26-27 are rejected as depending upon claim 25 without remedying such deficiency.
Claim 25 recites the limitation "the phytopathogenic fungal strain cultures" in line 6. There is insufficient antecedent basis for this limitation in the claim. Claims 26-27 are rejected as depending upon claim 25 without remedying such deficiency.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 28 recites the broad recitation Yeast Extract, and the claim also recites ABE-IT 56 which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. It would be acceptable to delete the parentheses around Yeast Extract, if such meaning is intended by applicant.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 16-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Simoneau et al. (US 2015/0216174 A1; published 06 August 2015) in view of Gopalakrishnan et al. (Journal of Natural Products, 1997, Vol. 60, No. 5, pages 519-524; of record).
Simoneau et al. discloses a method for preventing, controlling or treating a fungal infection on a plant organ includes applying to the plant organ a non-fungicidal amount or a potentiating amount of a composition including a potentiating agent of a plant defense molecule, in association with a phytopharmaceutical vehicle (abstract) wherein the fungal infection is an infection by a phytopathogenic fungus such as Alternaria brassicicola (paragraph [0034]) wherein the plant organ can be Brassica oleracea (paragraph [0035]) wherein a potentiating agent of a plant defense molecule is chelerythrin (paragraph [0037]) wherein a non-fungicidal molar concentration is 1-50 µM (paragraph [0038]) wherein the potentiating agent of a plant defense molecule is a product capable of altering and/or inhibiting the signaling pathways involved in the growth and/or development of fungi (paragraph [0058]) wherein the composition may include a natural mineral or synthetic agent for stimulating the production of a plant defense molecule or an elicitor such as acibenzolar-S-methyl (i.e., a fungicide) (paragraphs [0073], [0075], [0179]) wherein the composition comprises a plant defense molecule (paragraph [0169]) wherein the plant defense molecule is present in the composition in a non-fungicidal amount (paragraph [0170]) wherein the product is a phytopharmaceutical (paragraph [0076]).
Simoneau et al. does not disclose γ-mangostin as claimed.
Gopalakrishnan et al. discloses antifungal activity of natural xanthones (title) against phytopathogenic fungi wherein fruit hull extracts of Garcinia mangostana includes γ-mangostin (page 519 first column) wherein such γ-mangostin was found to be the most active against the fungi (page 520 first column).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Simoneau et al. and Gopalakrishnan et al. by using the γ-mangostin of Gopalakrishnan et al. as a plant defense molecule in the method and composition of Simoneau et al. as discussed above, in a non-fungicidal amount as suggested by Simoneau et al., with a reasonable expectation of success. A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to do so to use therein a natural xanthone agent known for antifungal efficacy against phytopathogenic fungi (i.e., a known plant defense agent) given that Simoneau et al. suggests using a plant defense agent in a non-fungicidal amount, and also given that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination per MPEP 2144.07, and also given that substitution of equivalents known for the same purpose supports a prima facie obviousness determination per MPEP 2144.06(II).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B. PALLAY whose telephone number is (571)270-3473. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:00 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571)272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL B. PALLAY/Primary Examiner, Art Unit 1617
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