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 .
Election/Restrictions
Applicant’s election without traverse of Group II in the reply filed on 08/25/2025 is acknowledged.
Applicants elected diosmetin (as a species of formula II).
This reads on claims 5-7, 12-18, and 20-26.
Claims 27-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/27/2025.
Current Status of 17/920,731
This Office Action used the claims of 10/27/2025.
Claims 5-7, 12-18, 20-26 are examined on the merits.
Priority
This Application is a national stage entry of PCT/CN2021/089105 and also claims foreign priority to CN202001334025.0.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
A review of the file wrapper indicates a foreign language priority document. However, since it is not in English, a judgement cannot be made as to whether it supports the instant claims, which is required to perfect foreign priority. The conditions of 35 U.S.C. § 119(a)-(d) or (f) are not met.
Therefore, the effective filing date for the instant claims is the international filing date of 04/23/2021.
Information Disclosure Statement
The information disclosure statement (IDS), submitted on 11/06/2025, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 5 and 6 are objected to because of the following informalities: Claims 5 and 6 recite “R17, R19, R21 and R22 are independently selected from H, C1-3 alkyl, …. and a group of formula…”. This phrasing is awkward because Markush groups should be formatted, for example, like “selected from A, B, or C”. See MPEP 2117 (I) to see other appropriate language. Applicants should delete “a group of” from the Markush group in order to have the Markush group flow according to the usual format. Appropriate correction is required.
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 5-7, 12-18, 20-26 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: administering a compound of formula II. As currently written, claim 5 recites “A method of controlling or killing mites, comprising treating the mites a product comprising a compound of formula II”. There is no active step relating “treating the mites” and “a product”. Adding a step such as “administering” would help overcome this rejection.
The dependent claims 6-7, 12-18, 20-26 are rejected for not resolving the rationale underpinning this rejection.
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.
Claim(s) 5-7, 12-18, 20-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by INAMI (WO2013146913A1) as evidenced by Stromberg (Joseph Stromberg, “These mites live on your face and come out to have sex at night”, Vox, June 13, 2014).
INAMI anticipates a method of administering diosmetin (ref. claims 1, 3) to humans (Bottom of page 3 of the machine translation). INAMI anticipates diosmetin is part of a skin external preparation composition (ref claims 3 and 8). Examiner understands this phrasing as a topical preparation of claim 15.
Diosmetin is a compound of claims 5-7.
Stromberg is relied upon for the beneficial teaching that 99.9% of humans carry mites (page 2). Stromberg discloses these mites as either Demodex Folliculorum and/or Demodex Brevis (page 3). These are mites of claims 12, 20 and 21.
This anticipates a method of controlling mites by treating the mites (achieved by administering an external skin composition containing diosmetin) wherein the compound of formula II is diosmetin. This anticipates claims 5-7, 12, 20-21.
There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Chemical properties are inherent to their compounds. See MPEP 2112 (II). Products of identical chemical composition can not have mutually exclusive properties. A chemical composition, containing diosmetin, and its properties, controlling or killing mites, are inseparable. See MPEP 2112.01 (II).
Applicants are reminded that the office does not have the facilities and resources to provide the factual evidence needed in order to establish that the product of the prior art does not possess the same material, structural and functional characteristics of the claimed product. In the absence of evidence to the contrary, the burden is on the applicant to prove that the claimed product is different from those taught by the prior art and to establish patentable differences. See In re Best 562F.2d 1252, 195 USPQ 430 (CCPA 1977) and Ex parte Gray 10 USPQ 2d 1922 (PTO Bd. Pat. App. & Int. 1989).
INAMI anticipates a pharmaceutical composition or cosmetic product (“third invention… can be used as a pharmaceutical product, a quasi-drug or a cosmetic product” on page 4) of claim 13.
Regarding claim 14, 22, 23, 24’s “wherein” clauses, MPEP 2111.04 states, a “‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’” Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)).
In this case, the wherein clause expresses the desired result of the positive step of treating the mites with a product comprising diosmetin. Since the prior art reference anticipates the instantly claimed method, this limitation is met. See also MPEP 2112.02. This anticipates claims 14, and 22-24.
INAMI anticipates diosmetin is part of a skin external preparation composition (ref claims 3 and 8). Examiner understands this phrasing as a topical preparation of claims 15 and 25. INAMI anticipates administering this to human and nonhuman mammals (i.e. veterinary composition) (page 3). This anticipates claims 15-16 and 25.
INAMI anticipates using the composition as part of a body or hand soap (page 5) of claim 17 and lotion (page 7) of claims 18 and 26.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GILLIAN A HUTTER whose telephone number is (571)272-6323. The examiner can normally be reached M-F 7:30-5.
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/G.A.H./ Examiner, Art Unit 1625 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625