DETAILED ACTION
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 29, 2026, has been entered.
Previous Rejections
Applicant’s arguments, filed April 29, 2026, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Status
Claims 11-22 are examined here-in.
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 non-obviousness.
Claims 11-22 are rejected under 35 U.S.C. 103 as being unpatentable over Marat US 2013/0315847 A1, of record) in view of Shroot (US 4,548,942).
Marat teaches a cosmetic process for depigmenting, lightening, or bleaching keratin materials of the skin by application of a compound of formula I (abstract).
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Marat teaches the compounds of formula I are intended to be applied to areas with “brownish pigmentation spots” on the skin (paragraph 0012). Marat teaches that the compound of formula I should be included in a cosmetic composition in the amount of 0.01 to 10% by weight in a “physiologically acceptable medium” that is compatible with the skin (paragraphs 0083-0085).
Marat teaches that R1 or R2 may be a i) hydrogen atom, or ii) a saturated linear C1-C20 or branched C3-C20 or unsaturated C2-C20 alkyl group optionally interrupted with one or more heteroatoms chosen from N, S, and O, and/or optionally substituted with one or more groups, or iii) a saturated C1-C8 alkyl group substituted with a C5-C12 aryl radical optionally substituted, or iv) a phenyl group optionally substituted, or v) it being possible for R1 and R2 to form with the nitrogen atom which bears them, a ring chosen from pyrrolidine, pyrroline, piperidine, piperazine, morpholine, thiomorpholine, and azepine and or salts or solvates thereof (paragraph 0014).
Marat teaches additional compounds that may be included in the composition are retinol and salicylic acid, among others, in the amount of 0.01 to 15% by weight (paragraphs 0089-0096).
Marat does not teach that application of the compounds prevents black or brown coloration of comedones specifically.
Shroot teaches the missing element of Marat.
Shroot teaches that acne, which includes the appearance of blackheads, is caused by the hyperkeratinization of ducts of the sebaceous glands (column 1 lines 9 – 14).
Shroot teaches compounds of the following formula (I), where R1 is a linear or branched alkyl with 1 to 12 carbon atoms, a mono- or polyhydroxyalkyl with 2 to 5 caron atoms, an alkenyl having 3 to 6 carbon atoms, or a cycloalkyl of formula (II) for inclusion in anti-acne compositions (column 1 lines 39 – 68).
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Shroot teaches compositions with the above compound are for topical application and can be in the form of a lotion, ointment, milk, cream, or gel, among others (column 2 lines 39 – 44). Shroot teaches that an acne treatment compound should be applied to the area of skin affected with acne (column 2 lines 40 – 43, column 3 lines 43 – 48, claim 1).
The combination of Marat and Shroot’s teachings renders instant claims 11 – 22 prima facie obvious according to MPEP 2143(i)(g). A person of ordinary skill in the art would be motivated to use Marat’s compounds for the treatment of acne because Shroot teaches that acne is caused by the hyperkeratinization of ducts of the sebaceous glands (column 1 lines 9 – 14). As such, a person of ordinary skill in the art would expect Marat’s compound, which Marat teaches is suitable for depigmenting keratin materials (abstract, paragraph 0012) to be effective to treat acne characterized by the presence of blackheads, also known as comedones. A person of ordinary skill in the art would also recognize the similarity in chemical structure between Marat and Shroot’s compounds of Formula (I), and would anticipate that the properties of Shroot’s compound (i.e. treatment of acne) would also be true of Marat’s compound (MPEP 2144.09(i)). For these reasons, the combination of Marat and Shroot’s teachings is prima facie obvious according to MPEP 2143(i)(g), as the modification of a prior art reference motivated by the teachings or suggestions of another.
Marat’s teaching of a cosmetic process for depigmenting, lightening, or bleaching keratin materials of the skin by application of a compound of formula I (abstract) in combination with Shroot’s teaching that acne is caused by hyperkeratinization (column 1 lines 9 – 14) reads on instant claims 11 – 14, 20, and 22. As discussed above, a person of ordinary skill in the art would expect Marat’s compound, which Marat teaches is suitable for depigmenting keratin materials (abstract, paragraph 0012) to be effective to treat acne characterized by the presence of blackheads, also known as comedones, because Shroot teaches that acne is caused by hyperkeratinization (column 1 lines 9 – 14).
Further, a person of ordinary skill in the art would also recognize the similarity in chemical structure (pyridine rings with pendant S group, pendant carboxamide groups) between Marat and Shroot’s compounds of Formula (I), and would anticipate that the properties of Shroot’s compound (i.e. treatment of acne) would also be true of Marat’s compound (MPEP 2144.09(i)).
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Shroot’s teaching that an acne treatment compound should be applied to the area of skin affected with acne (column 2 lines 40 – 43, column 3 lines 43 – 48, claim 1) reads on the limitation “applying to the comedones” and “topical application to the comedones” as recited in claims 11 and 22.
Marat’s teaching that a compound of formula I should be included in a medium that is suitable for application to the skin of the face and body (paragraphs 0083-0085) reads on instant claim 15 and 19.
Marat’s teaching that the compound of formula I should be included in a cosmetic composition in the amount of 0.01 to 10% by weight (paragraph 0084) overlaps on the claimed amount of 0.1 to 5% by weight and 0.5 to 3% by weight as recited in instants claim 16 and 21, respectively. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(I).
Marat’s teaching that additional compounds that may be included in the composition are retinol and salicylic acid, among others, in the amount of 0.01 to 15% by weight (paragraphs 0089-0096) reads on instant claims 17 and 18.
Examiner’s Reply to Attorney Arguments Dated April 29, 2026
Applicant argues that (1) Marat is silent to any teaching or suggestion relating to comedones, including application of compounds to comedones (Remarks page 10) and (2) that inhibition of black or brown color in open comedones occurs with a different mechanism to depigmenting as taught by Marat (Remarks pages 10 - 12). Applicant’s arguments have been considered but are moot because the new grounds of rejection specifically addresses the claims as presently amended.
Double Patenting (Maintained)
The judicially created doctrine for non-statutory double patenting rejections has been described in detail in the previous action.
Double Patenting over U.S. Patent No. 9,138,392
Claims 11-22 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 – 9 of U.S. Patent No. 9,138,392.
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 11 is drawn to a method for preventing black or brown coloration of comedones on skin by applying a composition comprising at least one compound of formula I.
Conflicting claim 1 is drawn to a cosmetic process for depigmenting, lightening, and/or whitening keratin materials comprising selecting a human subject with brown pigmentation marks and applying to a keratin material a compound of formula I.
The compound of formula I for the instant and conflicting claims is the same.
The instant and conflicting claims differ because instant claim 11 recites preventing black or brown coloration of comedones on skin while conflicting claim 1 recites depigmenting, lightening, and/or whitening keratin materials. Instant claim 11’s recitation for preventing black or brown coloration of comedones on skin reads on conflicting claim 1’s recitation for depigmenting, lightening, and/or whitening keratin materials.
Double Patenting over U.S. Patent No. 11,052,028
Claims 11 – 22 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 - 20 of U.S. Patent No. 11,052,028.
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 11 is drawn to a method for preventing black or brown coloration of comedones on skin by applying a composition comprising at least one compound of formula I.
Conflicting claim 1 is drawn to a depigmenting or lightening composition for at least one human keratin material comprising a compound of formula I.
The compound of formula I for the instant and conflicting claims is the same.
The instant and conflicting claims differ because instant claim 11 recites an active method step of applying a composition with a compound of formula I. However, conflicting claim 1 recites the intended use of application of a compound with formula I to a human keratin material, therefore, instant claim 11 reads on conflicting claim 1.
Double Patenting over U.S. Application No. 16/061,908
Claims 11 – 22 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 34 – 67 of copending Application No. 16/061,908.
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 11 is drawn to a method for preventing black or brown coloration of comedones on skin by applying a composition comprising at least one compound of formula I.
Conflicting claim 34 is drawn to a method for depigmenting, lightening, and/or bleaching keratin materials by applying a cosmetic composition with compound 1.
Compound 1 of the conflicting applications meet the structure of the instant application’s formula I.
The instant and conflicting claims differ because instant claim 11 recites preventing black or brown coloration of comedones on skin while conflicting claim 34 recites depigmenting, lightening, and/or whitening keratin materials. Instant claim 11’s recitation for preventing black or brown coloration of comedones on skin reads on conflicting claim 34’s recitation for depigmenting, lightening, and/or whitening keratin materials.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Double Patenting over U.S. Application No. 18/652,169
Claims 11 – 22 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claim 1 of copending Application No. 18/652,169.
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 11 is drawn to a method for preventing black or brown coloration of comedones on skin by applying a composition comprising at least one compound of formula I.
Conflicting claim 1 is drawn to a cosmetic process for depigmenting, lightening, and/or whitening keratin materials which comprises the application of a compound of formula I.
The compound of formula I for the instant and conflicting claims is the same.
The instant and conflicting claims differ because instant claim 11 recites preventing black or brown coloration of comedones on skin while conflicting claim 1 recites depigmenting, lightening, and/or whitening keratin materials. Instant claim 11’s recitation for preventing black or brown coloration of comedones on skin reads on conflicting claim 1’s recitation for depigmenting, lightening, and/or whitening keratin materials.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Examiner’s Reply to Attorney Arguments Dated April 29, 2026
Applicant argues that the instantly claimed methods would not have been obvious over Marat’s teachings for the same reasons discussed with regards to the 35 U.S.C. 103 rejections (Remarks pages 12 and 13). As discussed in the body of the rejection above, instant claim 11’s recitation for preventing black or brown coloration of comedones on skin reads on the conflicting claims’ recitation for depigmenting, lightening, and/or whitening keratin materials. Said differently, the conflicting claims’ recitation for depigmenting, lightening, and/or whitening keratin materials encompasses the instant limitation of preventing black or brown coloration of comedones on skin.
Conclusion
All claims are rejected. No claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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