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 .
DETAILED ACTION
Status of the Claims
Claims 1-17 and 25-34 are pending and are examined on their merits.
Duplicate Claims Warning Withdrawn
As claim 18 has been canceled, the duplicate claims warning over claims 17 and 18 is moot.
Claim Interpretation
Applicant has amended claim 1 to include the term “enriched extract” as defined in the specification on page 9 as “a plant extract or other preparation having at least a two-fold up to a 1000-fold increase of one or more active compounds as compared to one or more active compounds found in the weight of the plant material or other source before extraction or other preparation.” This phrase is being interpreted as an increase in concentration (wt%) of the compound found as compared to the active compound’s presence in the plant.
Duplicate Claims
Applicant is advised that should claim 2 be found allowable, claim 32 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
35 U.S.C. § 112(b) Rejections Overcome by Amendment
Applicant has further amended claim 1 to no longer recite a “for use” indication. The associated 112(b) rejection over claims 1, 11-17, and 25-30 is thereby withdrawn.
35 U.S.C. § 112(b) Rejections Maintained
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 1, 3-16, 25-26 and their dependent claims 2, 17-18, and 27-30 are 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.
Response to Arguments
Applicant’s amendment to claim 1 in the response filed on February 3rd 2026 is acknowledged. Applicant has amended claim 1 to recite “A compound, wherein the compound comprises at least one enriched extract that is extracted from Dianella ensifola” Applicant argues that the 112(b) rejection of claim 1 over the phrase ‘diarylalkane compound’ is now moot.
It is noted that a compound is defined, in its entirety, by its chemical structure. Thereby, it is unclear how a compound can “comprise an extract.” Furthermore, a compound, being a single chemical structure, cannot comprise ‘multiple extracts,’ as implied by the claim language. Thus, claim 1 and its dependent claims 3-11, 13, 15, 25, 27, and 29 remain indefinite.
Response to Arguments
Applicant argues that claim 1 is amended to remove the use indications and two claims were added directed towards the use of the claimed compounds. However, claims 3-10 still retain the “compound for use” claim language. The 112(b) rejections over claims 3-10 are thereby maintained.
Rejection Reiterated
Claims 3-10 are indefinite for reciting a compound “for use,” as the use of a compound is not patentably distinct from the compound itself.
Response to Arguments
Applicant argues that claims 11-16 are amended to depend from claims 33 and 34, rendering their 112(b) rejections moot. However, applicant has not addressed the rejection, in that the claims include functional descriptive language that only limit the intended result of using the compound and do not further limit the compound itself.
Regarding applicant’s amendments, as each of claims 11-16 recite “the compound of claim 33” or “the compound of claim 34,” and claim 33 and 34 recite “the use of the compound of claim 1” and “the use of the compound of claim 31,” this amended claim dependency renders the claims further indefinite. As claims 11-16 only require “the compound” of claims 33/34, and not “the use” of said compounds, they are not further limiting to claims 33-34, directed towards “the use” of the compounds. The 112(b) rejections over claims 11-16 are thereby maintained.
Rejection Reiterated
Claims 11-16 are indefinite for reciting the compound of claim 1 or 2 (now 33 or 34) wherein
An anti-aging benefit is achieved by…
At least one gene… is upregulated
At least one anti-aging benefit is achieved by regulating protein expressions of…
Each of the claims recite an intended result of using the claimed compound. However, each of the claims is directed towards the compound. It is unclear how any of the phrases in claims 11-16 further limit the compound of claims 1 or 2 (33 or 34), because they do not place limitations on the compound itself, but only on the results of its intended use.
Response to Arguments
Similarly, the rejections to claims 25 and 26 have not been addressed. Claim 26 has been amended to depend on claim 31, but the described deficiency remains, in that claims 25 and 26 still only recite the compound “wherein the compound is formulated in a carrier…” and are not limiting to the compound itself. The 112(b) rejections over claims 25-26 are thereby maintained.
Rejection Reiterated
Claims 25-26 are indefinite for reciting the compound of claim 1 or 2 (31) “wherein the compound is formulated in a carrier…” because the phrase does not further limit the compound of either claim 1 or 2 (31) and only places further limits on the use of the compound. As the use of a compound is not patentably distinct from the compound itself, claims 25 and 26 are indefinite.
35 U.S.C. § 112(b) Rejections Necessitated by Amendment
Claims 31 and 33-34 are 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 31 recites a compound, wherein the compound comprises at least one enriched extract that is biosynthesized from plant tissues or fungi tissues, stem cells and transgenic microbials and synthetically modified by isolated or expressed enzymes. Claim 31 is indefinite, because one of ordinary skill in the art could not reasonably determine the metes and bounds of claim 31. It is noted that a compound is defined, in its entirety, by its chemical structure. Thereby, it is unclear how a compound can “comprise an extract.” Furthermore, the claim is left open in scope to where the metes and bounds, as read by one of ordinary skill in the art, would include any and all compounds “biosynthesized from plant tissues or fungi tissues, stem cells and transgenic microbials and synthetically modified by isolated or expressed enzymes.” As the metes and bounds of claim 31 are unclear, claim 31 is indefinite.
Claims 33 and 34 are indefinite for reciting the “use of” the compound of claim 1 and claim 31, respectively, because one of ordinary skill in the art could not reasonably determine the metes and bounds of the claims. Specifically, claims 33 and 34 do not recite one of the four statutory categories, but only the “use of” a compound, and it is thus the scope of each of the two claims is unclear.
35 U.S.C. § 101 Rejections Maintained
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The rejection of claims 1-17 and 25-30 rejected under 35 U.S.C. 101 is maintained.
Response to Arguments
Applicant’s arguments in the response filed on February 3rd 2026 are acknowledged. Applicant argues that “the claims in this application are amended to include the term “enriched” or “enriched for” and that these extracts are not naturally occurring products, derived experimentally. As stated above, the term “enriched extract” is interpreted to mean “a plant extract or other preparation having at least a two-fold up to a 1000-fold increase in wt% of one or more active compounds as compared to one or more active compounds found in the weight of the plant material or other source before extraction or other preparation.”
Applicant’s arguments are found not persuasive. First, the difference between applicant’s purported “enriched extract” and the “natural product,” are not significant. For example, if one such compound was found in the plant at a wt% of 0.1%, an extract containing 0.2% of the compound would be enough to qualify as “enriched,” by applicant’s definition.
Furthermore, the “unexpected results” applicant attempts to demonstrate with the comparison in Tables 9-14 between dimethoxytolyl propylresorcinol (Nivitol) and retinol do not, as applicant claims on page 2 of the response, demonstrate that the compounds are not the same ones found in nature, but only that one naturally occurring compound performs better than another. The claimed comparison, that “These compounds are not the same as the ones found in nature and were experimentally derived. Once they were produced and evaluated, they were found to be more effective than the natural extracts alone,” is not found in the specification. There is no comparison between the “enriched extracts” and “the natural extracts alone,” but only between naturally occurring compounds.
Finally, a chemical compound’s identity is not determined in any way by its source. Thus, dimethoxytolyl propylresorcinol molecules are identical regardless of whether they were extracted from a plant, enriched from a plant, or made in a laboratory synthesis. Thus, the compound dimethoxytolyl propylresorcinol, and claims 1-17 and 25-30, are considered a natural phenomenon and the 101 rejections over claims 1-17 and 25-30 is maintained.
Rejection Reiterated
Claims 1-17 and 25-30 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. The claims recite a diarylalkane compound, wherein the compound comprises dimethoxytolyl propylresorcinol, and wherein the compound is extracted from Dianella ensifolia, a plant commonly known as the ‘flax lily.’ This judicial exception is not integrated into a practical application because only the compound, and a ‘composition comprising the compound’ are claimed. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the compound is known to be found in nature, extracted from the flax lily, and merely the ‘compound’ and ‘compositions comprising the compound’ are claimed.
35 U.S.C. § 101 Rejections Necessitated by Amendment
Applicant’s addition of new claims 31 and 33-34 in the response filed on February 3rd 2026 is acknowledged.
Claims 31 and 32 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. The claims recite “a compound, wherein the compound comprises at least one enriched extract that is biosynthesized from plant tissues or fungi tissues, stem cells, and transgenic microbials, and synthetically modified by isolated or expressed enzymes.” This judicial exception is not integrated into a practical application because it merely recites naturally occurring compounds (compounds synthesized via natural means) modified by natural processes (enzymes). The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the compound is known to be found in nature, extracted from the flax lily, and merely the ‘compound’ and ‘compositions comprising the compound’ are claimed.
Claims 33 and 34 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because they are directed only to the use of a compound.
35 U.S.C. § 102 Rejections Maintained
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.
The rejection of claims 1-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaur (US 2012/0045407 A1 published on February 23rd 2012) is maintained.
Response to Arguments
Applicant argues in the response filed on February 3rd 2026 that Kaur does not recite that the compound, ‘Nivitol,’ “comprises at least one enriched extract that is extracted from Dianella ensifolia. Regarding this argument, it is noted that a chemical compound is not defined by its source. That is, the identity of the compound is identical whether it is extracted from a plant or produced in a laboratory synthesis. See MPEP 2113:
PRODUCT-BY-PROCESS CLAIMS ARE NOT LIMITED TO THE MANIPULATIONS OF THE RECITED STEPS, ONLY THE STRUCTURE IMPLIED BY THE STEPS
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffmann-La Roche Ltd., 580 F.3d 1340, 1370 n. 14, 92 USPQ2d 1289, 1312, n. 14 (Fed. Cir. 2009). See also Biogen MA Inc. v. EMD Serono, Inc., 976 F.3d 1326, 1334, 2020 USPQ2d 11129 (Fed. Cir. 2020) ("Biogen is certainly correct that the scope of composition and method of treatment claims is generally subject to distinctly different analyses. But where, as here, the novelty of the method of administration rests wholly on the novelty of the composition administered, which in turn rests on the novelty of the source limitation, the Amgen analysis will necessarily result in the same conclusion on anticipation for both forms of claims."); United Therapeutics Corp. v Liquidia Techs., Inc., 74 F.4th 1360, 1373, 2023 USPQ2d 862 (Fed. Cir. 2023) (the court held that product-by-process claims were properly rejected as "anticipated by a disclosure of the same product irrespective of the processes by which they are made."); and Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ("a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim").
As Kaur teaches the compound, Nivitol (dimethoxytolyl propylresorcinol), Kaur thereby anticipates claims 1-17 and 25-26 and the 102 rejections over claims 1-17 and 25-26 are thereby maintained.
Rejection Reiterated
Claims 1-17 and 25-26 are directed towards a diarylalkane compound wherein the compound comprises wherein the compound is 1-(3-methyl-2,4-dimethoxyphenyl)-3-(2’,5’-dihydroxyphenyl)-propane:
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This compound is known in the art as ‘Nivitol.’
Kaur teaches Nivitol (Kaur, pg. 22, claim 10). As the use of a compound is not patentably distinct from the compound itself, and the compound remains the same regardless of its source, Kaur anticipates claims 1-17 and 25-26.
35 U.S.C. § 102 Rejections Necessitated by Amendment
Claims 31-34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaur (US 2012/0045407 A1 published on February 23rd 2012).
Applicant’s new claims 31-34, added in the response filed on February 3rd 2026 are acknowledged.
Claim 31 recites “A compound, wherein the compound comprises at least one enriched extract that is biosynthesized from plant tissues or fungi tissues, stem cells, and transgenic microbials, and synthetically modified by isolated or expressed enzymes.” It is noted that this claim language is incredibly broad, encompassing any compound that is synthesized by any plant, fungi, stem cell, or transgenic microbial, then modified by an enzyme.
Claim 32 further limits the compound of claim 31 to dimethoxytolyl propylresorcinol.
Kaur teaches Nivitol (Kaur, pg. 22, claim 10), anticipating claims 31-32.
Claim 33 is directed towards “the use of the compound of claim 1…” As the use of a compound is patently indistinct from the compound itself, claim 33 is anticipated by Kaur for the same reasons as claim 1.
Claim 34 is directed towards “the use of the compound of claim 31…” As the use of a compound is patently indistinct from the compound itself, claim 34 is anticipated by Kaur for the same reasons as claim 31.
35 U.S.C. § 103 Rejections Maintained
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 rejection of claims 27-30 are rejected under 35 U.S.C. 103 as being unpatentable over Kaur (US 2012/0045407 A1 published on February 23rd 2012) is maintained.
Response to Arguments
Applicant’s arguments in the response filed on February 3rd 2026 are acknowledged. Applicant argues that Kaur does not recite that the compound, ‘Nivitol,’ “comprises at least one enriched extract that is extracted from Dianella ensifolia, and that claim 1 is novel over Kaur, rendering claims 27-30 nonobvious. As the 102 rejections over Kaur have been maintained (see above), the 103 rejections are similarly maintained.
Rejections Reiterated
Claims 27-30 are directed towards a composition comprising 1-(3-methyl-2,4-dimethoxyphenyl)-3-(2’,5’-dihydroxyphenyl)-propane (Nivitol) wherein the compound is present at an amount of 0.001-2% or 0.2%.
Kaur teaches Nivitol as a skin lightening agent (Kaur, pg. 22, claim 10), and suggests suitable amounts of the composition at 0.1-5% and 1-2% (Kaur, pg. 6, paragraph [0054]). One of ordinary skill in the art would have a reasonable expectation of success in optimizing the amount of Nivitol present in the composition to the 0.2% described by applicant. See MPEP 2144.05(II)(A):
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.)
Claims 27-30 are therefore prima facie obvious.
Nonstatutory Double Patenting Rejections Maintained
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.
Response to Arguments
Applicant has requested that the nonstatutory double patenting rejections be held in abeyance. The rejections are thereby maintained.
Rejections Reiterated
Claims 1-17 and 25-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 7,767,661. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches a compound (common name: Nivitol) identical to that of the instant application.
Claims 1-17 and 25-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 8,592,488. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches a composition comprising 0.01-5% of a compound (common name: Nivitol) identical to that of the instant application. One of ordinary skill in the art would reasonably optimize the amount to that recited in claims 27-30.
Claims 1-17 and 25-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 8,729,136. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches a compound (common name: Nivitol) identical to that of the instant application.
Claims 1-17 and 25-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 9,126,913. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches a compound (common name: Nivitol) identical to that of the instant application.
Claims 1, 3-11, 13, 15, 19, 25, 27, and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 10,548,825. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches a composition comprising the diarylalkane compound, 1-(2,4-dihydroxyphenyl)-3-(2′-hydroxyphenyl)-1-propanol. One of ordinary skill in the art would reasonably optimize the amount to that recited in claims 27 and 29.
Claims 1-17 and 25-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 10,857,082. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches a compound (common name: Nivitol) identical to that of the instant application.
Claims 1, 3-11, 13, 15, 25, 27, and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,857,657. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches a composition comprising the diarylalkane compound, 1-(2,4,6-trihydroxyphenyl)-3-(3′-hydroxy-4′-methoxyphenyl)-1-propanol. One of ordinary skill in the art would reasonably optimize the amount to that recited in claims 27 and 29.
Nonstatutory Double Patenting Rejections Necessitated by Amendment
Claims 31-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 7,767,661. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches a compound (common name: Nivitol) identical to that of the instant application.
Claims 31-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 8,592,488. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches a composition comprising 0.01-5% of a compound (common name: Nivitol) identical to that of the instant application.
Claims 31-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 8,729,136. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches a compound (common name: Nivitol) identical to that of the instant application.
Claims 31-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 9,126,913. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches a compound (common name: Nivitol) identical to that of the instant application.
Claims 31-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 10,548,825. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches a composition comprising the diarylalkane compound, 1-(2,4-dihydroxyphenyl)-3-(2′-hydroxyphenyl)-1-propanol.
Claims 31-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 10,857,082. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches a compound (common name: Nivitol) identical to that of the instant application.
Claims 31-34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,857,657. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent teaches a composition comprising the diarylalkane compound, 1-(2,4,6-trihydroxyphenyl)-3-(3′-hydroxy-4′-methoxyphenyl)-1-propanol.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anthony Seitz whose telephone number is (703)756-4657. The examiner can normally be reached 7:30 AM ET - 5:00 PM ET M-F.
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/A.J.S./Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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