DETAILED ACTION
Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/19/2025 has been entered.
Previous Rejections
Applicant’s arguments, filed November 19, 2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Objections
Claim 26 is objected to because of the following informality:
Claim 26, bottom line, recites “t is independently an integer from 0 to 30”. There is no variable “t” in the claims, as amended, and this limitation should be removed. Appropriate correction is required.
Claim Rejections - 35 USC § 112- Failure to Further Limit
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 26 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 26 lists the following moiety B-(C)v
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Claim 26 depends from claim 19 which recites that C is a functional group, which is a maleimide having the following formula:
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therefore, claim 26 broadens the scope of claim 19.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 112 – Improper Markush Group
Claim 20 is rejected on the basis that it contains an improper Markush grouping of alternatives.
A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of claim 20 is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons:
The moieties of claim 20 are selected from a vast variety of chemical compound alternatives that do not share a substantially structural similarity or belong to the same recognized chemical class. For example, diethylamino hydroxybenzoyl hexyl benzoate as recited in claim 20 has the following structure:
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whereas bisdisulizole disodium has the vastly different structure:
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Since there is nothing common to the Markush alternative chemical species, one can conclude that the instantly claimed species as recited in claim 20 fail to share a substantial structural similarity or any substantial structural feature or common activity that naturally flows from the substantial structural feature. Thus, not all members recited in this improper Markush group of species belong to the same recognized physical/ chemical class.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Elected Species
In the response to Election/Restriction filed 01/22/2025 the applicant elected that the photoprotective moiety A is derived from diethylamino hydroxybenzoyl hexyl benzoate, as recited in claim 20. This elected species of claim 20 is allowable over the prior art. “If the elected species or group of patentably indistinct species is not anticipated by or obvious over the prior art, the examiner should extend the search and examination to a non-elected species or group of species that falls within the scope of a proper Markush grouping that includes the elected species.” See MPEP 803.02.C.II. The search/examination has been extended to “derived from oxybenzone” as recited in claim 20.
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.
Claims 19-20, 23, and 26 are rejected under 35 U.S.C. 102 as being as being anticipated by Polukhtin et al. (US 2014/0275482 A1).
Claims 19 and 23 are anticipated because Polukhtin discloses the following compounds with a photoprotective moiety, the claimed linker, and the claimed functional group “C”.
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Paragraph [0047].
Claim 20 is anticipated because the photoprotective moiety A is derived from oxybenzone.
Claim 26 is anticipated because Polukhtin discloses (at least) the claimed moiety B-(C)v
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.
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.
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 19-20, 23, and 26 are rejected under 35 U.S.C. 103 as being as being obvious over Polukhtin et al. (US 2014/0275482 A1).
Polukhtin et al is believed to be anticipatory as described above, but in the interest of completeness of prosecution, purely arguendo, and for the purposes of this ground of rejection only, Polukhtin will be interpreted as if it is not anticipatory.
In that case, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." See MPEP 2144.09.
In the instant case, the compounds of Polukhtin have very close structural similarities to the claimed compounds and would be expected to have similar properties/utilities because of the structural similarities (photoprotective moiety, linker, and claimed functional group “C”).
Claims 19 and 23 are rendered prima facie obvious because Polukhtin discloses the above-mentioned compounds with a photoprotective moiety, the claimed linker, and the claimed functional group “C” at paragraph [0047].
Claim 20 is rendered prima facie obvious because the photoprotective moiety A is derived from oxybenzone.
Claim 26 is rendered prima facie obvious because Polukhtin discloses (at least) the claimed moiety B-(C)v.
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Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 19-20, 23, 26-27, and 37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of copending Application No. 18/209,515.
Although the claims at issue are not identical, they are not patentably distinct from each other because the species (composition) recited in the claims of the copending application falls within the genus (composition) recited in the claims of the instant application, and thus read on the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not been patented.
Response to Double Patenting Arguments
Applicant argues that if a provisional non-statutory double patenting rejection is the only rejection remaining in an application having an earlier effective U.S. filing date the examiner should withdraw the rejection.
This argument is not persuasive because the provisional non-statutory double patenting rejection is not the only rejection remaining in the instant application.
Potentially Allowable Subject Matter/Claim Status
In regards to the previous obvious rejection over Barg et al. (US 2009/0156485) the applicant argues that the linker molecule (iii) in paragraph 90 of Barg is not the closest prior art because paragraph 90 does not disclose a compound actually made and “the applicant is not required to compare the claimed invention with subject matter that does not exist in the prior art”. Applicant argues that the closest prior art is an effector-linker molecule disclosed by Barg, (such as EI), which could not be made by the methods disclosed in Barg as shown in the Rault Declaration submitted 05/19/2025. Furthermore, applicant argues that the claimed compounds possess unexpected bio-adhesive properties over Barg with evidence submitted in the Pouletty Declaration (filed 11/19/2025).
In view of the applicant’s arguments and The Rault Declaration, the Examiner agrees that the cited reference (Barg et al.) fails to enable one skilled in the art to make the compound relied on in the Office Action and therefore, Barg does not teach the compound recited in claim 1, as amended (with Mal 2 as the functional group C). The Examiner also agrees that compound 17 exhibits unexpected results over Barg’s effector-linker molecule EI (increased UVA protection of skin; Pouletty Declaration).
As applicant’s arguments and claim amendments have overcome the rejection over Barg, the specific compounds recited in claims 27 and 37 are free of prior art.
Claims 27 and 37 would be allowable if the claims were rewritten to include all of the limitations of the base claim and any intervening claims.
As discussed above, claims 19-20, 23, and 26 are rejected under 35 U.S.C. 102/35 U.S.C. 103 over Polukhtin et al. (US 2014/0275482 A1) which is newly applied.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612