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
Claim 1 is pending in the application. Claim 1 is rejected.
Priority
This application claims priority under 35 U.S.C. 119(a-d) to CN202310867035.4, filed July 14th, 2023. Applicant has not filed a certified copy of the foreign priority application as required by 35 U.S.C. 119(b).
Information Disclosure Statement
The Examiner has considered the Information Disclosure Statement(s) filed on July 11th, 2024.
Specification
The disclosure is objected to because of the following informalities: The structures on page 2 of the specification should be replaced with higher resolution versions.
Appropriate correction is required.
Claim Objections
The structures in claim 1 should be replaced with higher resolution versions.
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.
Claim 1 is 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 directed to an “application” which appears to be tantamount to a “use”. Applicant is directed to MPEP 2173.05(q) which states: ‘"Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)("one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101 ").’ In this situation, the claim does not set forth any actual method steps only recites how a compound can be used.
Claim Rejections - 35 USC § 112(b)
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 1 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.
Claim 1 is directed to an “application” where the claim does not set forth active method steps. It is therefore unclear what minimal manipulations, if any, are required to meet the limitation of the “application”. MPEP 2173.05(q) states: ‘Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.’
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(1 of 5) Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1189997-80-5, which entered STN on October 25th, 2009.
Registry No. 1189997-80-5 is drawn to the first compound of instant claim 1. Claim 1 is rejected as indefinite as being directed to an “application” and the claim only appears to require the existence of the compound rather than any specific manipulations or method steps.
(2 of 5) Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1285941-53-8, which entered STN on April 26th, 2011.
Registry No. 1285941-53-8 is drawn to the second compound of instant claim 1. Claim 1 is rejected as indefinite as being directed to an “application” and the claim only appears to require the existence of the compound rather than any specific manipulations or method steps.
(3 of 5) Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CAS Registry No. 1286638-16-1, which entered STN on April 27th, 2011.
Registry No. 1286638-16-1 is drawn to the third compound of instant claim 1. Claim 1 is rejected as indefinite as being directed to an “application” and the claim only appears to require the existence of the compound rather than any specific manipulations or method steps.
(4 of 5) Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 116785292 A by Yu et al., which was published September 22nd, 2023 and names Hayashi Isahiro as an inventor who is not named as an inventor on the instant application.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
The prior art teaches the first compound of instant claim 1 on page 36 (compound P19453), the second compound of instant claim 1 on page 52 (compound P22445) and the third compound of instant claim 1 on page 59 (compound P22475). Claim 1 is rejected as indefinite as being directed to an “application” and the claim only appears to require the existence of the compound rather than any specific manipulations or method steps. Regardless, the prior art teaches application in SARS-CoV-2 in the machine translation. See page 83 of 90 of the attached document.
(5 of 5) Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by WO 2025/015645 A1, which was filed August 7th, 2023 and names Yonghao Lin as an inventor who is not recited as an inventor on the instant application.
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
The prior art teaches the first compound of instant claim 1 on page 15 (compound P19453), the second compound of instant claim 1 on page 31 (compound P22445) and the third compound of instant claim 1 on page 38 (compound P22475). Claim 1 is rejected as indefinite as being directed to an “application” and the claim only appears to require the existence of the compound rather than any specific manipulations or method steps. Regardless, the prior art teaches application in SARS-CoV-2 in the machine translation. See page 100 of 116 of the attached document.
Conclusion
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/MATTHEW P COUGHLIN/Primary Examiner, Art Unit 1626
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