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, claims 1 – 16 in the reply filed on June 30, 2026 is acknowledged.
Claims 7 – 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 June 30,2026.
Claims 1 – 6 are under Examination.
Status of Claims
Claims 1 – 6 are pending.
Claims 1 – 6 are rejected.
Drawings
The drawings are objected to because the single Figure is not referenced according to the MPEP 1.84 (u) Numbering of views.
(1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation "FIG." Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear.
Amending the title of the drawing to “The Figure” will overcome this objection.
Specification
The disclosure is objected to because of the following informalities: the specification refers to “The Figure” as Fig. 1 in paragraph [0056] and Figure 1 in paragraph [00108]. The objection can be overcome by amending the specification to “The Figure” when referring to the drawings.
Appropriate correction is required.
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 – 5 are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Abad et al. (WO2013/004871).
The rejected claim covers, inter alia, a ceramide compound of formula I
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, wherein R1 = condensation residues of ferulic acid, sinapic acid,
abscisic acid, sotretinoin, tretinoin, fusidic acid, royal jelly acid, sorbic acid, caffeic
acid or trans-cinnamic acid; and R2 is selected from one of the following structures:-C₁₅H₂₉, -C₁₅H₃₁> -C₁₅H₂₇, - CHOHC₁₄H₂₇, -CHOHC₁₄H₂₉.
Dependent claims 2 – 5 further limit the compound.
However, Abad discloses the compound of formula (I)
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with the substituents as defined in the abstract. On such compound is listed on page 11 at line 23.
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. This anticipates Applicant’s compound of formula I when R1 is the residue of sorbic acid and R2 is -C15H31.
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.
Claim(s) 1 – 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chang et al. (JACS, Communications, 2002).
The rejected claim covers, inter alia, a ceramide compound of formula I
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, wherein R1 = condensation residues of ferulic acid, sinapic acid,
abscisic acid, sotretinoin, tretinoin, fusidic acid, royal jelly acid, sorbic acid, caffeic
acid or trans-cinnamic acid; and R2 is selected from one of the following structures:-C₁₅H₂₉, -C₁₅H₃₁> -C₁₅H₂₇, - CHOHC₁₄H₂₇, -CHOHC₁₄H₂₉.
Dependent claims 2 – 5 further limit the compound. Dependent claim 6 discloses that the compound of formula (I) is antioxidant.
Chang discloses the synthesis and biological characterization of a ceramide library. Chang discloses the core:
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, and the tail:
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in Figure !. The completed structure is as follows:
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This compound anticipates Applicant’s claim compound when R1 is the residue of tretinoin and R2 is CHOHC14H29.
With regard to the feature of being an antioxidant. Chang discloses a compound of Applicant’s claim 1. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim Rejections - 35 USC § 102
Claim(s) 1 – 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. (Bioorganic Chemistry, 2008).
The rejected claim covers, inter alia, a ceramide compound of formula I
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, wherein R1 = condensation residues of ferulic acid, sinapic acid,
abscisic acid, sotretinoin, tretinoin, fusidic acid, royal jelly acid, sorbic acid, caffeic
acid or trans-cinnamic acid; and R2 is selected from one of the following structures:-C₁₅H₂₉, -C₁₅H₃₁, -C₁₅H₂₇, - CHOHC₁₄H₂₇, -CHOHC₁₄H₂₉.
Dependent claims 2 – 5 further limit the compound. Dependent claim 6 discloses that the compound of formula (I) is antioxidant.
Park disclose divergent syntheses of all steroisomers of phytosphingosine and heir use in the construction of a ceramide library. (abstract). Park prepares the compound:
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This compound anticipates Applicant’s claim compound when R1 is the residue of cinnamic acid and R2 is CHOHC14H29.
With regard to the feature of being an antioxidant. Chang discloses a compound of Applicant’s claim 1. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692
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