DETAILED ACTION
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 .
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 14, 16 & 18-20 are rejected under 35 U.S.C. 102(a)(1)(2) as being anticipated by 2020/0064330 (CSMC).
CSMC teaches a method of predicting a subject's response to an IBS-D therapy [0151]. CSMC tested for H2S and subject positive therfor had the greatest diarrhea and abdominal pain among subjects referred for testing. CSMC teaches a breath test panel for MO testing and can be a predictor for treatment [0091] a subject having or suspected of having IBS-D and treated with rifaximin [0013]. Further, CSMC discloses a method of treating IBS-D [0005] with rifaximin by detecting H2S and characterizing the
subject as a responder to the IBS-D therapy when the quantity of hydrogen sulfide is higher than its reference quantity [000] diagnosing H2S positive condition if the H2S level is higher than a reference level [0091]. CSMC also teaches wherein the TBS-D therapy decreases hydrogen sulfide produced in the
subject's gastrointestinal system [0038]. Wherein IBS-D therapy decreases the quantity of Desulfovibrio, a quantity of Fusobacterium, or both in the subject's
gastrointestinal system, a recitation, said results would have been necessarily been inherent to the method of CMSC as the methodology is the same as is claimed.
The reference anticipates the claim subject matter.
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 1-3, 5-10 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0238468 (Tuk) and Chey et al (Ther Adv In Gastroenterology, Vol 13 (23) 2020.
Tuk teaches a method of distinguishing IBS-D from IBS-C in a subject (para [0015] diagnosis of whether the test sample is from a subject suffering from IBS-A, IBS-C, or IBS-D), by detecting a quantity in a biological sample from the subject
[0015] by determining the levels of two or more bacteria [0042]. Tuk teaches administering an TBS-D therapy [0077]. Tuk teaches using a stool is a stool [0042].
Tuk fails to explicitly disclose detecting a quantity of Desulfovibrio, a quantity of Fusobacterium, or both; and identifying the subject as having IBS-D when the quantity of Desulfovibrio, the quantity of Fusobacterium, or both are each higher than its reference quantity, however Chey teaches that IBS-D is a bacteria common in IBS-D patients (p 9 col 1) Fusobacteria were the most common bacterial phyla detected in fecal samples from patients with IBS-D). It would have been obvious to one of ordinary skill in the art at the time of the invention was filed to modify the method of Tuk by measuring Fusobacteria especially as Chey teaches in IBS-D patients the Fusobacteria lowered when the IBS-D is treated (Table 1). Chey teaches wherein the TBS-D therapy comprises rifaximin (p col 2).
Applicant is directed to pages 12-13 of KSR v Teleflex (500 US 398 2007) “ … the Court has held that a “patent for a combination which only unites old elements with no change intheir respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one(emphasis added). If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); >see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.");< ** In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Accordingly, the claimed invention was prima facie obvious to one of ordinary
skill in the art at the time the invention was filed especially in the absence of evidence
to the contrary.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over
US 2012/0238468 (Tuk) and Chey et al (Ther Adv In Gastroenterology, Vol 13 (23) 2020 and 2005/0272686 (Dentone).
Tuk teaches a method of distinguishing IBS-D from IBS-C in a subject (para [0015] diagnosis of whether the test sample is from a subject suffering from IBS-A, IBS-C, or IBS-D), by detecting a quantity in a biological sample from the subject
[0015] by determining the levels of two or more bacteria [0042]. Tuk teaches administering an TBS-D therapy [0077]. Tuk teaches using a stool is a stool [0042].
Tuk fails to explicitly disclose detecting a quantity of Desulfovibrio, a quantity of Fusobacterium, or both; and identifying the subject as having IBS-D when the quantity of Desulfovibrio, the quantity of Fusobacterium, or both are each higher than its reference quantity, however Chey teaches that IBS-D is a bacteria common in IBS-D patients (p 9 col 1) Fusobacteria were the most common bacterial phyla detected in fecal samples from patients with IBS-D). It would have been obvious to one of ordinary skill in the art at the time of the invention was filed to modify the method of Tuk by measuring Fusobacteria especially as Chey teaches in IBS-D patients the Fusobacteria lowered when the IBS-D is treated (Table 1). Chey teaches wherein the TBS-D therapy comprises rifaximin (p col 2).
Neither Tuk nor Chey teach including however it would have been obvious at the time the invention was filed to include NAC in the therapy of TuK because Dentone teaches treating IBS (Abstract) with N-acetyl cysteine (NAC) [0041] the dietary supplement
includes an antioxidant in addition to the nucleotides to optimize the efficacy of the treatment [0022].
Applicant is directed to pages 12-13 of KSR v Teleflex (500 US 398 2007) “ … the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one(emphasis added). If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); >see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.");< ** In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Accordingly, the claimed invention was prima facie obvious to one of ordinary
skill in the art at the time the invention was filed especially in the absence of evidence
to the contrary.
Claims 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over
2020/0064330 (CSMC) and Dentone.
CSMC teaches a method of predicting a subject's response to an IBS-D therapy [0151]. CSMC tested for H2S and subject positive therfor had the greatest diarrhea and abdominal pain among subjects referred for testing. CSMC teaches a breath test panel for MO testing and can be a predictor for treatment [0091] a subject having or suspected of having IBS-D and treated with rifaximin [0013]. Further, CSMC discloses a method of treating IBS-D [0005] with rifaximin by detecting H2S and characterizing the
subject as a responder to the IBS-D therapy when the quantity of hydrogen sulfide is higher than its reference quantity [000] diagnosing H2S positive condition if the H2S level is higher than a reference level [0091]. CSMC also teaches wherein the TBS-D therapy decreases hydrogen sulfide produced in the
subject's gastrointestinal system [0038]. Wherein IBS-D therapy decreases the quantity of Desulfovibrio, a quantity of Fusobacterium, or both in the subject's
gastrointestinal system, a recitation, said results would have been necessarily been inherent to the method of CMSC as the methodology is the same as is claimed.
CSMC doesn’t teach including NAC in their IBS treatment however it would have been obvious at the time the invention was filed to include NAC in the therapy of CSMC because Dentone teaches treating IBS (Abstract) with N-acetyl cysteine (NAC) [0041] the dietary supplement includes an antioxidant in addition to the nucleotides to optimize the efficacy of the treatment [0022].
Applicant is directed to pages 12-13 of KSR v Teleflex (500 US 398 2007) “ … the Court has held that a “patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147, 152 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one(emphasis added). If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); >see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.");< ** In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997).
Accordingly, the claimed invention was prima facie obvious to one of ordinary
skill in the art at the time the invention was filed especially in the absence of evidence
to the contrary.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLAINE LANKFORD whose telephone number is (571)272-0917. The examiner can normally be reached M-Th 8-6:30.
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BLAINE LANKFORD
Examiner
Art Unit 1657
/BLAINE LANKFORD/Primary Examiner, Art Unit 1657
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