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 .
Claims 1-12 are pending in the instant application. Claims 1-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to non-elected subject matter. The withdrawn subject matter is patentably distinct from the elected subject matter as it differs in structure and element and would require separate search considerations. In addition, a reference which anticipates one group would not render obvious the other. Claims 10-12 are rejected.
Information Disclosure Statement
The information disclosure statement filed on December 11, 2023 has been considered and a signed copy of form 1449 is enclosed herewith.
Election/Restrictions
Applicant’s election with traverse of Group II, claims 10-12, and the compound 1,3-Dibenzoylpropane in the response filed on April 9, 2026 is acknowledged. The traversal is on the ground(s): there is no undue burden. This not found to be persuasive because the inventions are independent and distinct because there is no patentable co-action between the groups and a reference anticipating one member will not render another obvious. Each group is directed to art recognized divergent subject matter which require different searching strategies for each group. Moreover, the examiner must perform a commercial database search on the subject matter of each group in addition to a paper search, which is quite burdensome to the examiner. Therefore, the restriction requirement (between groups) is still deemed proper and is hereby made final. Upon further search and consideration, however, the election of species requirement is withdrawn (i.e., the full scope of the subject matter of claims 10-12 has been searched and examined in its entirety).
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 10-12 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.
With regards to claim 10, the term “derivative thereof” of 1,3-diphenyl-1,3-propanedione (DBM) is not defined in the specification; therefore, the claims are rendered indefinite. In other words, it is unclear to the examiner what exactly can be considered a derivative of DBM. The specification gives an embodiment (see [0034]) wherein “the derivative of DBM is selected from the group consisting of 1,3-diphenyl-1,3-propanedione, 1,3-Dibenzoylpropane, 2-Bromo-1,3-diphenylpropane-1,3-dione, Benzoic anhydride, 1,3-Bis(4-methoxyphenyl)-1,3-propanedione, and 1-(2-Hydroxyphenyl)-3-phenyl-1,3-propanedione.” However, the term is not defined in the specification in a way that would allow one of ordinary skill in the art to immediately envisage what can be considered a derivative of DBM or what exactly can fit within the scope of this term.
Also, with regards to claim 10, the term “skin condition” is not defined in the specification; therefore, the claims are rendered indefinite. In other words, it is unclear to the examiner what exactly can be considered a skin condition. The specification gives an embodiment (see [0012]) wherein “the local or topical administration of 1,3-diphenyl-1,3-propanedione or analogs thereof may be for the treatment of skin conditions including, for example, irritation, rashes, infections, burns, insect bites, and sunburn. In another embodiment, the skin conditions also include several that are related to the patient's immune system. Common immune-related cutaneous adverse events (‘immune-related disorders’) include vitiligo, alopecia, and dermatoses from forms of pruritus, psoriasis, eczema, and lichenoid conditions.” However, the term is not defined in the specification in a way that would allow one of ordinary skill in the art to immediately envisage what can be considered a skin condition or what exactly can fit within the scope of this term.
This rejection can be overcome by amending claim 10 to include the limitation of claim 12 or “ wherein the derivative of DBM comprises a structurally-related analog of 1,3-Diphenyl-1,3-propanedione selected from 1,3-Dibenzoylpropane, 2-Bromo-1,3-diphenylpropane-1,3-dione, 2-Fluoro-1,3- diphenylpropane-1,3-dione, Benzoic anhydride, 1,3-Bis(4-methoxyphenyl)-1,3- propanedione, 1-(2-Hydroxyphenyl)-3-phenyl-1,3-propanedione, 2-Fluoro-1,3- bis(perfluorophenyl)propane-1,3-dione, 1,3-Bis(2-fluorophenyl) propane-1,3-dione, and 2-Fluoro-1,3-bis(4-fluoropheny1)propane-1,3-dione” and to include specific types of skin conditions which can be treated.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTIN ANN VAJDA whose telephone number is (571)270-5232. The examiner can normally be reached Mon-Fri 6:00-4:00.
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/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622
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