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 .
Election/Restrictions
Applicant’s election without traverse of group I and compound SIAIS264156 as a starting point for a Markush-type search in the reply filed on 2025 September 2 is acknowledged. The table below shows the scope of the search done due to no prior art against the elected species:
X
L
R
N(Ra1), O, or S
Linear or branched C1-3 alkylene
Not limited
N(Ra1), O, or S
Linear or branched alkylene interrupted one or more times by an arylene or heteroarylene group
Not limited
Alkynylene or alkenylene
Linear or branched alkylene interrupted one or more times by an arylene or heteroarylene group
Not limited
Bond
Linear or branched alkylene interrupted one or more times by an arylene or heteroarylene group
Not limited
Claims 1-3, 7-27, 30, 34-37, 41-45, and 48-62 are pending. with respect to the above scope. A search against the conditions of L representing -La2-La1-* has not been done due to prior art.
Claims 9, 27 and 51-53 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 2025 September 2.
Claim Objections
Claims 45 and 48-50 are objected to because of the following informalities: they recite an intended use which does not limit the use of the compound.
In re Tuominen (213 USPQ 89) states the following:
The composition is the same no matter what its intended use is, and consequently, the appealed claims are not seen to distinguish over the art which also discloses a composition of the recited active ingredient. We will not construe the instant claims to be limited to compositions also containing other ingredients usually utilized in sunscreening compositions merely by the fact that the introductory clause of the claims recites a different contemplated utility for the claimed composition not taught by the art. Rather, as done by the Examiner, we interpret the claims to be drawn to a composition of the active ingredients, per se, and, as such, under the rationale of Pearson, they fail to distinguish over the references.
When Tuominen is applied to claims 45 and 48-50, the recited intended use does not limit the use as claimed.
Claims 3 is objected to due to the language “wherein X, R, and L are as defined in claim 1” because variables, X, L, and R are not further limiting from claim 1.
Appropriate correction is required.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 2023 February 14, 2023 December 11, and 2024 June 13 have been submitted in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are considered by the examiner.
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.
Claim 24 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 24 recites limitations of examined variable L in which an arylene or heteroarylene is directly connected to variable X. There is insufficient antecedent basis for this limitation in the claim because variable L is an alkylene in parent claim 1.
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 (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 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.
Claim(s) 1, 3, 7, 8, 13, 15, 22, 23, 26, 30, 45, 48-50, and 54 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by BRADNER (WO 2016105518, published 2016 June 30). Bradner describes compound D-39 (page 165, lines 17-27). In this compound the following examined definitions apply: group X-L-R is NH-CH2-phenyl.
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Claim(s) 1-3, 7, 8, 13, 15, 22, 23, 30, 34, 43-45, 48-50, and 54 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by YANG (WO 2021/168314, published 2016 June 30, filed 2021 September 2, cited in IDS; priority back to US provisional application 62/979904). Yang describes compounds 1-23 (pages 14-17). In these compounds the following examined definitions apply: group X-L-R is NH-CH2-phenyl, in which the phenyl ring is substituted by an OMe, F, Me, Cl, CN, or CH2OH. Pharmaceutical compositions comprising these compounds (page 59, paragraph [0125] to page 63, paragraph [0140]). Provisional application 62/979904 provides support for these teachings (page 1, paragraph [0005] to page 3, paragraph [0007]; page 3, paragraphs [0009] and [0010]; page 26, paragraph [0101] to page 30, paragraph [0120]).
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Allowable Subject Matter
Claims 1-3, 7, 8, 13, 15, 22-24, 26, 30, 34, 43-45, 48-50, and 54 are not allowable.
Claims 9-12, 14, 16, 17-21, 25, 27, 35-37, 41, 42, and 55-62 are objected to as being dependent upon a rejected base claim with respect the search scope described above, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: BRADNER (WO 2016105518, published 2016 June 30) describes compound D-39 (page 165, lines 17-27). In this compound the following examined definitions apply: group X-L-R is NH-CH2-phenyl. This reference does not suggest that X-L-R can be –[N(Ra1)/O/S]-alkylene-[arylene/heteroarylene]-alkylene-R.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOBLE E JARRELL whose telephone number is (571)272-9077. The examiner can normally be reached 9:00 AM to 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fereydoun Sajjadi can be reached at 571-272-3311. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NOBLE E JARRELL/Primary Examiner, Art Unit 1699
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