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
RESPONSE TO ELECTION/RESTRICTION
Applicant’s election of group II, drawn to a method of inhibiting melanogenesis via administering compounds of formula 1 cited therein and elected species:
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in the reply filed on 8/12/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
The requirement is still deemed proper and is therefore made FINAL.
Claims 6 and 19-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
An action on the merits of claims 9-18 is contained herein. Applicants elected species was found free of the art and the search extended to cover species wherein R1 is -NHloweralkylOH.
Priority
This is a provisional application filed 2/15/2024.
Information Disclosure Statement
The examiner has considered the references cited in the information disclosure statement filed of record.
Specification
Applicant is reminded of the proper content of an Abstract of the Disclosure, see MPEP 608.01(b).
In chemical patent abstracts for compounds or compositions, the general nature of the compound or composition should be given as well as its use, 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 type reaction, reagents and process conditions should be stated, generally illustrated by a single example unless variations are necessary.
It is recommended that the structure of Formula I be inserted into the abstract to accurately illustrate the claimed invention.
Claim Objections
Claim 18 is objected to because of the following informality:
The preamble of claim 18 should incorporate alternative language such as “wherein the compound is selected from the group consisting of…” or something similar. Correction is required.
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 9-17 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 pre-AIA the applicant regards as the invention.
In the instant claim 9, Applicant recites variable R2 as being selected from embodiments such as “two chlorine atoms”. The latter is unclear as formula 1 recites variable R2 as a “singular” group capable of being substituted on the phenyl ring multiple times. Thus, what does Applicant intend by “two chlorine atoms” for this variable (e.g. Cl-Cl or something else?). Thus the claim and claims dependent on it which do not rectify the issue are indefinite. Correction is required. Additionally the scope of “appropriate position on the phenyl ring” is unclear as there is no definition of the latter defined in the claim or specification as filed. Claims 10-14 recite language such as “being for treating or preventing, etc.…”. However the invention is defined as a method of inhibiting melanogenesis. Thus are Applicants claiming several methods of use in one claim or something else? The examiner recommends these claims are canceled or amended to represent the scope of the elected invention.
See In re Zletz, 13 USPQ2d 1320, 1322, “An essential purpose of patent examination is to fashion claims that are precise, clear, correct and unambiguous.”
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], 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.
Claims 15 and 18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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. Claim 15 does not further limit claim 9 with respect to the double bond being of the E configuration since claim 9 already sets forth this limitation within the chemical formula itself. Additionally claim 18 recites species such as
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which appear not to fall within the scope of the term “aminoalkanol”. The species above have the limitation heterocyclyl substituted with hydroxy. There is no definition within the specification defining “aminoalkanoyl” suggesting that the term may embrace these compounds. In fact, the art describes these groups as possessing an amino and hydroxyl group on an alkane backbone:
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which does not support these species being embraced by this term as well.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 9-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated over Im et al. Acta Biochim Biophys Sin, 2017, 49(10), 945–953.
Im et al. teaches that ethanol extracts of Orostachys japonicus possess the property of connective tissue maintenance in melanogenesis (see page 946, top left paragraph). The extracts include the instantly claimed Idrocilamide which has the limitation R1 = -NH(CH2)2OH and R2 = H (see Table 1, page 948, right column to the right of “Leaves”. Thus the claimed method of use employing this compound is anticipated based on the reference.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN E MCDOWELL whose telephone number is (571)270-5755. The examiner can normally be reached on 8:30-6 MF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Murray can be reached at 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN E MCDOWELL/Primary Examiner, Art Unit 1624
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