DETAILED ACTION
Notice of Pre-AIA or AIA Status
The inventor or joint inventor should note that the instant invention, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-18 are pending in the instant invention.
Status of Priority
This invention is a Continuation-In-Part (CIP) of US Application No. 17/492,514, filed October 1, 2021 and now US 11,639,356, which claims priority under 35 U.S.C. § 119(e) to US Provisional Application No. 63/087,670, filed October 5, 2020.
Restrictions / Election of Species
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The forthcoming first Office action and prosecution on the merits includes claims 1-18, drawn to a method for cosmetically treating a skin condition, comprising topically administering to a mammalian subject in need thereof… a substituted heterocycle of the formula (I), shown to the right.
Thus, a first Office action and prosecution on the merits of claims 1-18 is contained within.
Specification Objection - Title
The inventor or joint inventor is reminded of the proper content of the title of the invention.
The title of the invention should be brief, but technically accurate and descriptive and should contain fewer than 500 characters. See 37 CFR 1.72(a) and MPEP § 606.
The title of the invention is not technically accurate and descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. In the revised title, the examiner suggests additionally identifying the substituted heterocycles of the formula (I).
The following title is suggested: SUBSTITUTED IMIDAZO[1,2-a]PYRAZINES AND PYRAZINO[1,2-a]PYRIMIDINES AS TOPICAL AGENTS FOR DERMATOLOGICAL APPLICATIONS.
Appropriate correction is required.
Specification Objection - Abstract
The inventor or joint inventor is reminded of the proper content of an abstract of the disclosure.
With regard particularly to chemical patents, for compounds or compositions, the general nature of the compound or composition should be given as well as the use thereof, e.g., The compounds are of the class of alkyl benzene sulfonyl ureas, useful as oral anti-diabetics. Exemplification of a species could be illustrative of members of the class. For processes, the reactions, reagents and process conditions should be stated, generally illustrated by a single example, unless variations are necessary. See MPEP § 608.01(b), Section B.
The abstract of the disclosure is objected to because it fails to exemplify any members or formulae illustrative of its class. Correction is required. See MPEP § 608.01(b).
The examiner suggests incorporating the structure of formula (I) into the abstract, to overcome this objection.
Claim Objections
Claim 1 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b), the existing recitation should be replaced with the following recitation:
A method for cosmetically treating a skin condition in a mammalian subject, wherein the method comprises topically administering to the mammalian subject in need thereof a cosmeceutically effective amount of a compound of formula (I):
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(I)
or a cosmeceutically acceptable salt thereof,
wherein:
L is -C(O)- or -S(O)2-;
X is -C(O)- or -CH2C(O)-;
Y is H or C(O)R;
R is C1-30 alkyl or C2-30 alkenyl;
R1 is H or CH3;
R2 is H or CH3;
R3 is H or D;
Q is benzyl, phenyl, or a bicyclic 8- to 11-membered aryl;
wherein the 8- to 11-membered aryl optionally contains 1, 2, or 3 heteroatoms independently selected from the group consisting of nitrogen, oxygen, and sulfur;
wherein the benzyl is optionally substituted with one or more substituents independently selected from the group consisting of halogen, CN, NO2, C1-4 perfluoroalkyl, C(NH)NH2, C(O)OH, NH2, NHC1-4 alkyl, N(C1-4 alkyl)2, NHC(NH)NH2, OH, and OC1-3 alkyl; and
wherein the phenyl is optionally substituted with one or more substituents independently selected from the group consisting of halogen, CN, NO2, C1-4 alkyl, C1-4 perfluoroalkyl, C(NH)NH2, C(O)OH, NH2, NHC1-4 alkyl, N(C1-4 alkyl)2, NHC(NH)NH2, OH, and OC1-3 alkyl; and
n is 1 or 2.
Appropriate correction is required. See MPEP § 2173.02.
Claim 2 is objected to because of the following informalities: for brevity, clarity, and precision, the existing recitation should be replaced with the following recitation:
The method of claim 1, wherein the compound is of formula (Ia):
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(Ia)
or a cosmeceutically acceptable salt thereof,
wherein:
Q is naphthalenyl, quinolinyl, isoquinolinyl, cinnolinyl, phthalazinyl, quinazolinyl, or naphthyridinyl.
Appropriate correction is required. See MPEP § 2173.02.
Claim 3 is objected to because of the following informalities: for brevity, clarity and precision, the existing recitation should be replaced with the following recitation:
The method of claim 2, wherein the compound is of formula (Ib):
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(Ib)
or a cosmeceutically acceptable salt thereof,
wherein:
X1 is CH or N;
Y is H or C(O)R;
R is:
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,
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,
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, or
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; and
m is 1, 2, 3, 4, 5, 6, 7, 8, 9, or 10.
Appropriate correction is required. See MPEP § 2173.02.
Claim 4 is objected to because of the following informalities: for brevity, clarity and precision, the existing recitation should be replaced with the following recitation:
The method of claim 2, wherein the compound is of formula (Ic):
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(Ic)
or a cosmeceutically acceptable salt thereof,
wherein:
X1 is CH or N;
Y is H or C(O)R;
R is:
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,
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,
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, or
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; and
m is 1, 2, 3, 4, 5, 6, 7, 8, 9, or 10.
Appropriate correction is required. See MPEP § 2173.02.
Claim 5 is objected to because of the following informalities: for clarity and precision, the existing recitation should be replaced with the following recitation:
The method of claim 1, wherein the compound is selected from the group consisting of:
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,
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,
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,
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,
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, and
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,
or a cosmeceutically acceptable salt thereof.
Appropriate correction is required. See MPEP § 2173.02.
Claim 7 is objected to because of the following informalities: for brevity, clarity, precision and to avoid issues under 35 U.S.C. § 112(b) and/or 35 U.S.C. § 112(d), the existing recitation should be replaced with the following recitation:
The method of claim 1, wherein the skin condition is mediated by cyclic adenosine monophosphate response element-binding binding protein (CBP)/b-catenin signaling.
Appropriate correction is required. See MPEP § 2173.02.
Claim 8 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b), the existing recitation should be replaced with the following recitation:
The method of claim 1, wherein the skin condition is an aging skin condition selected from the group consisting of acne, cracking, dryness, hair loss, hyperpigmentation, loss of elasticity, loss of hair coloration, loss of vibrance, redness, reduced cuticle growth, reduced eyebrow growth, reduced eyelash growth, reduced nail growth, rosacea, scarring, sun damage, thinning, ultraviolet damage, and wrinkles, or a combination thereof.
Appropriate correction is required. See MPEP § 2173.02.
Claim 10 is objected to because of the following informalities: for clarity, precision and to avoid issues under 35 U.S.C. § 112(b), the existing recitation should be replaced with the following recitation:
The method of claim 1, wherein the skin condition is an aging skin condition selected from the group consisting of hair loss, loss of hair coloration, reduced cuticle growth, reduced eyebrow growth, reduced eyelash growth, and reduced nail growth, or a combination thereof.
Appropriate correction is required. See MPEP § 2173.02.
Claim 12 is objected to because of the following informalities: for clarity and precision, the existing recitation should be replaced with the following recitation:
The method of claim 1, wherein the method further comprises topically administering to the mammalian subject in need thereof a cosmeceutically effective amount of the compound of formula (I) in a range of from 0.125 mg to 1.250 mg at least once daily.
Appropriate correction is required. See MPEP § 2173.02.
Claim 13 is objected to because of the following informalities: for clarity and precision, the existing recitation should be replaced with the following recitation:
The method of claim 12, wherein the method further comprises topically administering to the mammalian subject in need thereof at least 0.375 mg of the compound of formula (I) at least once daily.
Appropriate correction is required. See MPEP § 2173.02.
Claim 14 is objected to because of the following informalities: for clarity and precision, the existing recitation should be replaced with the following recitation:
The method of claim 13, wherein the method further comprises topically administering to the mammalian subject in need thereof the compound of formula (I) twice daily.
Appropriate correction is required. See MPEP § 2173.02.
Claim 15 is objected to because of the following informalities: for clarity and precision, the existing recitation should be replaced with the following recitation:
The method of claim 14, wherein the method further comprises topically administering to the mammalian subject in need thereof the compound of formula (I) for a period of at least four weeks.
Appropriate correction is required. See MPEP § 2173.02.
Claim 16 is objected to because of the following informalities: for clarity and precision, the existing recitation should be replaced with the following recitation:
The method of claim 15, wherein the method further comprises topically administering to the mammalian subject in need thereof the compound of formula (I) for a period of at least eight weeks.
Appropriate correction is required. See MPEP § 2173.02.
Claim 17 is objected to because of the following informalities: for brevity, clarity and precision, the existing recitation should be replaced with the following recitation:
The method of claim 1, wherein Y is C(O)R.
Appropriate correction is required. See MPEP § 2173.02.
Claim 18 is objected to because of the following informalities: for brevity, clarity and precision, the existing recitation should be replaced with the following recitation:
The method of claim 17, wherein:
R is
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; and
m is 1, 2, 3, 4, 5, 6, 7, 8, 9, or 10.
Appropriate correction is required. See MPEP § 2173.02.
Claim Rejections - 35 U.S.C. § 112(b)
The following is a quotation of the second paragraph of 35 U.S.C. § 112:
(b) CONCLUSION. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or joint inventor regards as the invention.
Claims 1, 2 and 6-18 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to set forth the subject matter which the inventor or joint inventor regards as the invention.
The inventor or joint inventor should note that claim 1 recites the limitations, (1) amidazonyl, with regard to optional substituents for Q; (2) sulfuryl, with regard to optional substituents for Q; (3) C1-C30 alkenyl, with regard to Y; and (4) C1-C30 alkylene, with regard to Y, respectively, where the limitations are implausible and/or indefinite, resulting in an incomplete valence. Claims are unduly speculative where they define only a portion of a substituted heterocycle of the formula (I). Consequently, since incomplete valences are not permitted in the structure of the substituted heterocycles of the formula (I), an essential portion of the substituted heterocycles of the formula (I) is indefinite and one of ordinary skill in the art would not be reasonably apprised of the metes and bounds of the substituted heterocycles of the formula (I). {See Ex parte Pedlow and Miner, 90 USPQ 395 (Bd. Pat. App. & Int. 1951)}.
Moreover, the inventor or joint inventor should further note that [C]laims which depend from indefinite claims are also indefinite. {See Ex parte Cordova, 10 USPQ 2d 1949, 1952 (PTO Bd. App. 1989)}.
The examiner suggests amending the claims, particularly as stated in the section above entitled Claim Objections, to overcome this rejection.
Claims 8 and 9 are further rejected under 35 U.S.C. § 112(b) as being indefinite for failing to set forth the subject matter which the inventor or joint inventor regards as the invention.
The inventor or joint inventor should note that claim 8 recites the limitation, The method of claim 1, wherein the skin condition comprises one or more skin conditions selected from…, in lines 1-2 of the claim.
Similarly, the inventor or joint inventor should further note that MPEP § 2111.03 states the transitional term, comprising, which is synonymous with including, containing, or characterized by, is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. {See Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004); Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948); and Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367, 1371-73, 74 USPQ2d 1586, 1589-91 (Fed. Cir. 2005)}.
Likewise, the inventor or joint inventor should further note that [A] Markush group must be definite and complete as to its membership. A Markush group is indefinite, and claims are rejected, where the Markush group is defined as comprising. {See Ex parte Morrell, 100 USPQ 317 (Bd. Pat. App. & Int. 1953)}.
Moreover, the inventor or joint inventor should further note that [C]laims which depend from indefinite claims are also indefinite. {See Ex parte Cordova, 10 USPQ 2d 1949, 1952 (PTO Bd. App. 1989)}.
The examiner suggests amending the claims, particularly as stated in the section above entitled Claim Objections, to overcome this rejection.
Claim 10 is further rejected under 35 U.S.C. § 112(b) as being indefinite for failing to set forth the subject matter which the inventor or joint inventor regards as the invention.
The inventor or joint inventor should note that claim 10 recites the limitation, The method of claim 1, wherein the skin condition comprises one or more of…, in line 1 of the claim.
Similarly, the inventor or joint inventor should further note that MPEP § 2111.03 states the transitional term, comprising, which is synonymous with including, containing, or characterized by, is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. {See Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004); Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948); and Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367, 1371-73, 74 USPQ2d 1586, 1589-91 (Fed. Cir. 2005)}.
Moreover, the inventor or joint inventor should further note that [A] Markush group must be definite and complete as to its membership. A Markush group is indefinite, and claims are rejected, where the Markush group is defined as comprising. {See Ex parte Morrell, 100 USPQ 317 (Bd. Pat. App. & Int. 1953)}.
The examiner suggests amending the claim, particularly as stated in the section above entitled Claim Objections, to overcome this rejection.
Claim Rejections - 35 U.S.C. § 112(d)
The following is a quotation of the fourth paragraph of 35 U.S.C. § 112:
(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.
Claim 6 is rejected under 35 U.S.C. § 112(d) 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.
The inventor or joint inventor should note that claim 6 is rejected under 35 U.S.C. § 112(d) because the recitation of an additional physicochemical property of a compound used in a method from which the claim depends, must result in a patentably distinct methodical step in the recited method, in order to be further limiting. In the instant dependent claim, the substituted heterocycle of the formula (I) topically administered within the method for cosmetically treating a skin condition in a mammalian subject, as recited in claim 1, is administered as a composition comprising at least one compound of claim 1. Consequently, since the additional physicochemical property of the substituted heterocycle of the formula (I) topically administered within the method for cosmetically treating a skin condition in a mammalian subject, whereby the substituted heterocycle of the formula (I) is administered as a composition comprising at least one compound of claim 1, fails to result in a further patentably distinct methodical step in the method for cosmetically treating a skin condition in a mammalian subject, as recited in claim 1, and/or fails to include all the limitations of the method for cosmetically treating a skin condition in a mammalian subject, as recited in claim 1, it is not given patentable weight and thus, renders the instant dependent claim improperly dependent under 35 U.S.C. § 112(d). {See MPEP § 2111.02; and 37 CFR 1.75(c)}.
Similarly, the inventor or joint inventor should further note that the U.S. Court of Appeals for the Federal Circuit indicated that although the requirements of 35 U.S.C. § 112(d) are related to matters of form, non-compliance with 35 U.S.C. § 112(d) renders the claim unpatentable just as non-compliance with other subsections of 35 U.S.C. § 112 would. {See Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92 (Fed. Cir. 2006)}.
Moreover, the inventor or joint inventor should further note that if a dependent claim does not comply with the requirements of 35 U.S.C. § 112(d) the dependent claim should be rejected under 35 U.S.C. § 112(d) as unpatentable rather than objecting to the claim. {See also MPEP § 608.01(n), Section III, Infringement Test for dependent claims}.
The examiner suggests the inventor or joint inventor (1) cancel the dependent claim, (2) amend the dependent claims to place the dependent claim in proper dependent form, (3) rewrite the dependent claim in independent form, or (4) present a sufficient showing that the dependent claim complies with the statutory requirements, to overcome this rejection.
Claim 9 is rejected under 35 U.S.C. § 112(d) 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.
The inventor or joint inventor should note that claim 9 is rejected under 35 U.S.C. § 112(d) because the recitation of an additional physicochemical property of a compound used in a method from which the claim depends, must result in a patentably distinct methodical step in the recited method, in order to be further limiting. In the instant dependent claim, the cosmeceutically effective amount of the substituted heterocycle of the formula (I) topically administered within the method for cosmetically treating a skin condition in a mammalian subject, as recited in claim 1, is sufficient to reduce at least one of…. Consequently, since the additional physicochemical property of the cosmeceutically effective amount of the substituted heterocycle of the formula (I) topically administered within the method for cosmetically treating a skin condition in a mammalian subject, whereby the cosmeceutically effective amount of the substituted heterocycle of the formula (I) is sufficient to reduce at least one of…, fails to result in a further patentably distinct methodical step in the method for cosmetically treating a skin condition in a mammalian subject, as recited in claim 1, and/or fails to include all the limitations of the method for cosmetically treating a skin condition in a mammalian subject, as recited in claim 1, it is not given patentable weight and thus, renders the instant dependent claim improperly dependent under 35 U.S.C. § 112(d). {See MPEP § 2111.02; and 37 CFR 1.75(c)}.
Similarly, the inventor or joint inventor should further note that the U.S. Court of Appeals for the Federal Circuit indicated that although the requirements of 35 U.S.C. § 112(d) are related to matters of form, non-compliance with 35 U.S.C. § 112(d) renders the claim unpatentable just as non-compliance with other subsections of 35 U.S.C. § 112 would. {See Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92 (Fed. Cir. 2006)}.
Moreover, the inventor or joint inventor should further note that if a dependent claim does not comply with the requirements of 35 U.S.C. § 112(d) the dependent claim should be rejected under 35 U.S.C. § 112(d) as unpatentable rather than objecting to the claim. {See also MPEP § 608.01(n), Section III, Infringement Test for dependent claims}.
The examiner suggests the inventor or joint inventor (1) cancel the dependent claim, (2) amend the dependent claims to place the dependent claim in proper dependent form, (3) rewrite the dependent claim in independent form, or (4) present a sufficient showing that the dependent claim complies with the statutory requirements, to overcome this rejection.
Claim 11 is rejected under 35 U.S.C. § 112(d) 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.
The inventor or joint inventor should note that claim 11 is rejected under 35 U.S.C. § 112(d) because the recitation of an additional physicochemical property of a compound used in a method from which the claim depends, must result in a patentably distinct methodical step in the recited method, in order to be further limiting. In the instant dependent claim, the cosmeceutically effective amount of the substituted heterocycle of the formula (I) topically administered within the method for cosmetically treating a skin condition in a mammalian subject, as recited in claim 1, is sufficient to increase one or more of…. Consequently, since the additional physicochemical property of the cosmeceutically effective amount of the substituted heterocycle of the formula (I) topically administered within the method for cosmetically treating a skin condition in a mammalian subject, whereby the cosmeceutically effective amount of the substituted heterocycle of the formula (I) is sufficient to increase one or more of…, fails to result in a further patentably distinct methodical step in the method for cosmetically treating a skin condition in a mammalian subject, as recited in claim 1, and/or fails to include all the limitations of the method for cosmetically treating a skin condition in a mammalian subject, as recited in claim 1, it is not given patentable weight and thus, renders the instant dependent claim improperly dependent under 35 U.S.C. § 112(d). {See MPEP § 2111.02; and 37 CFR 1.75(c)}.
Similarly, the inventor or joint inventor should further note that the U.S. Court of Appeals for the Federal Circuit indicated that although the requirements of 35 U.S.C. § 112(d) are related to matters of form, non-compliance with 35 U.S.C. § 112(d) renders the claim unpatentable just as non-compliance with other subsections of 35 U.S.C. § 112 would. {See Pfizer, Inc. v. Ranbaxy Labs., Ltd., 457 F.3d 1284, 1291-92 (Fed. Cir. 2006)}.
Moreover, the inventor or joint inventor should further note that if a dependent claim does not comply with the requirements of 35 U.S.C. § 112(d) the dependent claim should be rejected under 35 U.S.C. § 112(d) as unpatentable rather than objecting to the claim. {See also MPEP § 608.01(n), Section III, Infringement Test for dependent claims}.
The examiner suggests the inventor or joint inventor (1) cancel the dependent claim, (2) amend the dependent claims to place the dependent claim in proper dependent form, (3) rewrite the dependent claim in independent form, or (4) present a sufficient showing that the dependent claim complies with the statutory requirements, to overcome this rejection.
Claim Rejections - Obviousness-type 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 obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined invention claim is not patentably distinct from the reference claims because the examined invention claim is either anticipated by, or would have been obvious over, the reference claims. {See 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); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969)}.
US Patent No. 11,639,356
Consequently, at least claims 1-5, 7, 8, 10, and 12-18 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 8-16 of US Patent No. 11,639,356. Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 8 in US 11,639,356 recites a method for cosmetically treating a skin condition in a mammalian subject, wherein the method comprises topically administering to the mammalian subject in need thereof a cosmeceutically effective amount of a compound of formula (I), where n = 1; L = -C(O)-; Q = -bicyclic 8- to 10-membered aryl; R1 = -H; R2 = -H; R3 = -H; X = -CH2C(O)-; and Y = -C(O)R, wherein R = -C1-30 alkyl, respectively, which provides overlapping subject matter with regard to the instantly recited method for cosmetically treating a skin condition in a mammalian subject, wherein the method comprises topically administering to the mammalian subject in need thereof a cosmeceutically effective amount of a compound of formula (I), where n = 1; L = -C(O)-; Q = -bicyclic 8- to 10-membered aryl; R1 = -H; R2 = -H; R3 = -H; X = -CH2C(O)-; and Y = -C(O)R, wherein R = -C1-30 alkyl, respectively.
US Patent No. 12,168,665
At least claims 1-5, 7, 8, 10, and 12-18 are further rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 4-9 of US Patent No. 12,168,665. Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 4 in US 12,168,665 recites a method for cosmetically treating a skin condition in a mammalian subject, wherein the method comprises topically administering to the mammalian subject in need thereof a cosmeceutically effective amount of a compound of formula (I), where n = 1; L = -C(O)-; Q = -bicyclic 8- to 10-membered aryl; R1 = -H; R2 = -H; R3 = -H; X = -CH2C(O)-; and Y = -C(O)R, wherein R = -C1-30 alkyl, respectively, which provides overlapping subject matter with regard to the instantly recited method for cosmetically treating a skin condition in a mammalian subject, wherein the method comprises topically administering to the mammalian subject in need thereof a cosmeceutically effective amount of a compound of formula (I), where n = 1; L = -C(O)-; Q = -bicyclic 8- to 10-membered aryl; R1 = -H; R2 = -H; R3 = -H; X = -CH2C(O)-; and Y = -C(O)R, wherein R = -C1-30 alkyl, respectively.
The inventor or joint inventor should note that a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 37 CFR 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground, provided the conflicting invention or patent either is shown to be commonly owned with this invention, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Similarly, the inventor or joint inventor should further note that the USPTO internet Web site contains terminal disclaimer forms which may be used, and the inventor or joint inventor is encouraged to visit http://www.uspto.gov/forms/, where (i) the filing date of the invention will determine what form should be used, and (ii) a web-based eTerminal Disclaimer may be filled out completely online using web-screens, respectively.
Moreover, the inventor or joint inventor should further note that an eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission.
Finally, for more information about eTerminal Disclaimers, the inventor or joint inventor should refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Allowable Subject Matter
No claims are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS M. WILLIS, whose telephone number is 571-270-5757. The examiner may normally be reached on Monday thru Thursday from 8:00-6:00 EST. The examiner is also available on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mr. Jeffrey Murray, may be reached on 571-272-9023. The fax phone number for the organization where this invention or proceeding is assigned is 571-273-8300.
Information regarding the status of an invention may be obtained from Patent Center. For more information about Patent Center, see https://www.uspto.gov/patents/apply/patent-center. Should you have questions on access to Patent Center, contact the Patent Electronic Business Center (PEBC) at 866-217-9197 (toll-free) or ebc@uspto.gov.
/DOUGLAS M WILLIS/
Primary Examiner, Art Unit 1624