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 .
Claims 1-7, 9, 10, 12-16 and 31 are pending in this application.
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 3-7 and 31 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.
The compound of claim 1 should be present in “an effective amount” in the pharmaceutical composition of claim 3 for the drug to work. Appropriate insertion of the phrase “an effective amount” following “comprising” is suggested.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kraemer et al. (US 4,713,465). The claims read on the compounds in Example 3 depicted below.
RN 104567-72-8 CAPLUS
CN 4H-1-Benzopyran-4-one, 2-(3,5-dibromo-4-hydroxyphenyl)-6-hydroxy-3-
methyl- (CA INDEX NAME)
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185
395
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RN 104567-77-3 CAPLUS
CN 4H-1-Benzopyran-4-one, 6-hydroxy-2-(4-hydroxy-3,5-diiodophenyl)-3-
methyl- (CA INDEX NAME)
PNG
media_image2.png
185
395
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Greyscale
.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by De Meyer et al. (Journal of Medicinal Chemistry (1991), 34(2), 736-46). The claims read on the compound depicted below. See Abstract.
RN 132020-48-5 CAPLUS
CN 4H-1-Benzopyran-4-one, 6-hydroxy-2-(4-hydroxyphenyl)-3-methoxy- (CA
INDEX NAME)
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media_image3.png
210
395
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Greyscale
.
Claim Rejections - 35 USC § 103
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.
Claims 1-7 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Kraemer (US 4,713,465). The reference teaches a generic group of flavones which embraces applicants’ claimed compounds (See col. 1, compounds of formula (I) and definitions of the variables). The claims differ from the reference by reciting specific species and a more limited genus than the reference. However, it would have been obvious to one having ordinary skill in the art at the time of the invention to select any of the species of the genus taught by the reference, including those instantly claimed, because the skilled chemist would have the reasonable expectation that any of the species of the genus would have similar properties and, thus, the same use as taught for the genus as a whole. One of ordinary skill in the art would have been motivated to select the claimed compounds from the genus in the reference since such compounds would have been suggested by the reference as a whole. It has been held that a prior art disclosed genus of useful compounds is sufficient to render prima facie obvious a species falling within a genus. In re Susi, 440 F.2d 442, 169 USPQ 423, 425 (CCPA 1971), followed by the Federal Circuit in Merck & Co. v. Biocraft Laboratories, 847 F.2d 804, 10 USPQ 2d 1843, 1846 (Fed. Cir. 1989).
Pharmaceutical compositions are formulated routinely in the art. Thus, one skilled in the art would be motivated to formulate the composition in any form including instantly claimed forms.
Allowable Subject Matter
Claims 9-16 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCK KIFLE whose telephone number is (571)272-0668. The examiner can normally be reached 8 AM - 6 PM, M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey H. Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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June 5, 2026
/BRUCK KIFLE/Primary Examiner, Art Unit 1624
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