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 .
In view of the appeal brief filed on 8/11/2025, PROSECUTION IS HEREBY REOPENED. as set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/Michael G. Hartley/ Supervisory Patent Examiner, Art Unit 1618
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 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.
Claim(s) 34-35,39-42 and 49-53 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Marat (US 2013/0315847, cited previously).
Marat discloses a process for depigmenting keratin materials using compositions containing thiopyridinone compounds of formula I or II below:
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932
450
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, note the compound above reads on the elected species (compound 1) when R1 is H and R2 is C1 methylene substituted with iv) CONHR3 where R3 is a hydrogen atom. See entire disclosure, especially abstract, [0014]-[0024],[0034]-[0035] and claims 1-4. The closest lead compound to applicants elected compound 1 of claim 1 is considered to be compound 18 of Marat shown below:
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204
658
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, different only by the substitution of an amine group for a hydroxyl (amide to carboxylic acid) from compound 1. As noted in formula I of Marat above ([0020]-[0021]) the saturated linear C1-C20 carbon contains substituents including amide and carboxylic acid, therefore applicants claimed compound 1 containing a carboxylic acid instead of an amide functional group would be readily envisaged by one of ordinary skill in the art of organic chemistry. Since only one functional group is being replaced with another disclosed functional group one of ordinary skill would readily envisage such a possibility. Regarding the amounts of compound in claims 39-42 Marat discloses amounts in particular of 0.5-3 wt%, within the claimed ranges. See [0084]. Regarding the limitation in claim 50 on physiologically acceptable medium, Marat discloses several adjuvants that are claimed including water and organic solvents. See [0087]-[0089] and claims 8-9.
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 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 34-35,39-42 and 49-53 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marat (US 2013/0315847, cited previously) in view of Nair et al. (WO 2004/069221), this new rejection was necessitated by amendment.
Marat is disclosed above. While the examiner believes the claims would have been readily envisaged by one of ordinary skill and therefore anticipated it also follows that substitution of a carboxylic acid for the amide of compound 18, producing claimed compound 1, would be obvious as these two substituents are clearly taught as alternatives to each other. One of ordinary skill would have a very high expectation of success in making such a modification since both functional groups are clearly taught and equivalent. Thus, the claimed invention would have been prima facie obvious since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Furthermore the following compound taught by Marat:
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, is nearly the same as compound 3 recited in claim 1 and compound 1 in claim 50:
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, except for the substitution of a methyl for hydrogen. See compound 28 on page 8 and claim 5. To substitute these homologs would be obvious to one of ordinary skill in the art. With regard to substitution group hydrogen versus methyl group, it is well established that the substitution of methyl for hydrogen on a known compound is not a patentable modification absent unexpected or unobvious results. In re Wood, 199 U.S.P.Q. 137 (C.C.P.A. 1978) and In re Lohr, 137 U.S.P.Q. 548, 549 (C.C.P.A. 1963). The claimed compounds are so closely related structurally to the homologous compounds of the reference as to be structurally obvious therefore in the absence of any unobviousness or unexpected properties.
Response to Arguments
Applicant's arguments filed 8/11/2025 have been fully considered but they are not persuasive.
Applicants assert the examiner has not established a prima facia case of anticipation as Marat discloses a broad genus of compounds possible from the various R groups. Applicants assert the examiner has not identified how Marat would allow one of ordinary skill to envisage each group in the limited manner claimed.
As noted in the modified rejection above when one of ordinary skill considers the lead compound 18 of Marat, they would readily envisage substitution of the amide group with a carboxylic acid as this possibility is clearly defined in the abstract and claims. Since only one functional group is being replaced with another disclosed functional group one of ordinary skill would readily envisage such a possibility. The claims are also considered obvious over Marat as detailed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES W ROGERS whose telephone number is (571)272-7838. The examiner can normally be reached 9:30-6:00 PM.
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, Michael Hartley can be reached at 571-272-0616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES W ROGERS/Primary Examiner, Art Unit 1618