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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the instant application on 08/06/2024.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/06/2024 is being considered by the examiner. The signed IDS form is attached with the instant office action.
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.
Claim 4 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. The claim recites “wherein the composition is administered locally” however it is unclear as to what direct part or wherein on the body the local administration needs to be administered.
Claim Rejections - 35 USC § 102
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 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 1-3 and 5-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lidia Alfaro et. al. (US9844576B2, US patent component to KR1021633131, filed in IDS).
Regarding claims 1 and 7-8, Alfaro discloses compositions for managing weight treating or preventing weight gain or obesity, promoting weight loss, appetite suppression, modifying satiety, or the like (see abstract) and wherein the composition to be administered comprises a Morus alba extract with an increased amount of Albanin G, Kuwanon G, Morusin, or any combination thereof, as compared to the amount of Albanin G, Kuwanon G, Morusin, or any combination thereof in unextracted Morus alba; a Magnolia officinalis extract with an increased amount of magnolol, honokiol, or both, as compared to the amount of magnolol, honokiol, or both in unextracted Magnolia officinalis (see claim 1). These subjects would be in need of reducing the size and weight of adipose tissue.
Regarding claim 3, Alfaro discloses extracting Morus alba with 70% ethyl alcohol (see example 12, column 129) and Magnolia officinalis with 70% ethyl alcohol (see example 29, column 136).
Regarding claims 4 and 6, Alfaro discloses subcutaneous injection (see line 44, column 94) which would imply adipose tissue and local administration because adipose tissue is also localized subcutaneously.
Regarding claim 5, Alfaro discloses the formulation as an injection (see line 39, column 94).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Lidia Alfaro et. al. (US9844576B2, US patent component to KR1021633131, filed in IDS).
Regarding claims 1 and 7-8, Alfaro discloses compositions for managing weight treating or preventing weight gain or obesity, promoting weight loss, appetite suppression, modifying satiety, or the like (see abstract), reducing body fat or fatty tissues (see column 110, lines 34-35), and wherein the composition to be administered comprises a Morus alba extract with an increased amount of Albanin G, Kuwanon G, Morusin, or any combination thereof, as compared to the amount of Albanin G, Kuwanon G, Morusin, or any combination thereof in unextracted Morus alba; a Magnolia officinalis extract with an increased amount of magnolol, honokiol, or both, as compared to the amount of magnolol, honokiol, or both in unextracted Magnolia officinalis (see claim 1). These subjects would be in need of reducing the size and weight of adipose tissue.
Regarding claim 3, Alfaro discloses extracting Morus alba with 70% ethyl alcohol (see example 12, column 129) and Magnolia officinalis with 70% ethyl alcohol (see example 29, column 136).
Regarding claims 4 and 6, Alfaro discloses subcutaneous injection (see line 44, column 94) which would imply adipose tissue and local administration.
Regarding claim 5, Alfaro discloses the formulation as an injection (see line 39, column 94).
Alfaro does not specifically teach that the Morus and Magnolia are in a 1:1 to 100:100 ratio. However, given the prior art and the knowledge of those skilled in the art this would have been an optimization well within the purview of any skilled artisan before the effective filing date for optimizing any of the known and described activities of the composition. Optimizing the components at equal parts is well within the skill or any artisan.
There would have been a reasonable expectation of success in arriving at the instant invention given the prior art.
Conclusion
Currently no claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB ANDREW BOECKELMAN whose telephone number is (571)272-0043. The examiner can normally be reached Monday-Friday 8am-5pm.
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, Anand Desai can be reached at 571-272-0947.The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
JACOB A BOECKELMANExaminer, Art Unit 1655
/ANAND U DESAI/Supervisory Patent Examiner, Art Unit 1655
Prosecution Insights