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 .
The Applicants’ Amendment to the Claims filed on May 8, 2026 is entered.
Priority
This is the First Office Action on the Merits of US 18/557,911 filed on 10/27/2023 which is a 371 of PCT/CN2022/089635 filed on 04/27/2022 which claims foreign priority benefit of CHINA 2021-10488537.7 filed on 04/30/2021. The Filing Receipt filed on 04/18/2026 is controlling. Please note that no English language translation of the foreign priority document CHINA 202110488537.7 is of record.
Election/Restrictions
Applicant's election with traverse of Invention Group I (e.g., claim 1-6 and 10), in the reply filed on May 8, 2026 is acknowledged.
Applicant's election with traverse of the species:
(1) "where m is 0 and n is 1" (reads on claims 1, 2-4, 10);
(2) X1 is C1~C6 alkoxy (reads on claims 1, 5-6, and 10);
(3) X2 is C1~C6 alkoxy (reads on claims 1, 2-4, and 10);
(4) Q1 is a C1 alkyl chain (reads on claims 1, 5-6, and 10); and
(5) Q2 is a C1 alkyl chain (reads on claims 1, 2, 4, and 10),
in the reply filed on May 26, 2026 is acknowledged.
The traversal regarding restriction of Groups is on the ground(s) that the applicants argue that “the examiner has provided no evidence that Claim 1, from which all claims of Group II and III depend, lack inventive step under the unity of invention standard”. Thus, the applicants argue that “no prima facie case of lack of inventive step has been established”.
The traversal regarding Species election “is on the ground that the alleged species all read on the same generic claim 1, and a species restriction cannot be made based on elements of the same claim”.
This is not found persuasive because the determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e). The instant claims are directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1. The groups of inventions do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: Inventions of groups I-II lack unity of invention because even though the inventions of these groups require the technical feature of an ascorbic acid polypeptide derivative, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Lee et al (WO-2009/051460 published April 23, 2009). Lee et al teach an ascorbic acid polypeptide derivative. (See Abstract).
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention Group, there being no allowable generic or linking claim.
Claim 3 is withdrawn because it is drawn to the non-elected species wherein: Q2 is a C2 alkyl.
Claims 5-6 are withdrawn because they are drawn to the non-elected species wherein: m is 1 and n is 0.
Applicant timely traversed the restriction (election) requirement in the reply filed on May 08, 2026.
Claim status
Claim 9 is canceled. Claims 1-8 and 10 are pending.
Claims 7-8 are withdrawn to nonelected invention Group.
Claims 3, and 5-6 are withdrawn to nonelected species.
Claims 1-2, 4 and 10 are under examination.
Information Disclosure Statement
The IDS filed on 10/27/2023 has been considered by the examiner.
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 1 is are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US2007/0093425 to Choi et al in “Vitamin C derivatives with peptides, preparation method thereof and composition comprising the same” (US Patent 7521477), as evidenced by the attached STIC structure result Answer 2 of 13 for Choi et al.
Regarding claim 1, Choi et al disclose vitamin C derivatives linked with a peptide or a pharmaceutical salt thereof, and compositions comprising the same. Choi et al disclose an ascorbic acid polypeptide derivatives or a salt thereof: wherein: - m is 0 and n is 1; - X2 is C1~C6 alkoxy; and - Q2 is a C1 alkyl chain: as follows:
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Specifically, Choi et al disclose:
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;
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;
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;
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530
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.
Claim(s) 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hill et al (WO 2018-005762 published 01/04/2018, IDS ref; Prov 62/356432); as evidenced by the attached STIC structure result Answer 1 of 13 for Hill et al.
Regarding claims 1-2, Hill et al disclose ascorbic acid-amino acid conjugates and compounds for use in methods of lowering intraocular pressure and/or treating glaucoma by restoring the filtration capabilities of the endothelial lining of Schlemm’s canal. Specifically, an ascorbic acid-amino acid conjugate has Formula I, wherein SC1 is amino acid side chain, R1, R2, R3 and R6 are independently selected from -H; a carbonyl group selected from -CHO and -C)X; X, R4, R5, etc (see ref claims and attached STIC Result 1 of 13). Specifically, Hill et al disclose the following ascorbic acid polypeptide derivative structure,
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which anticipates the claimed structure:
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, wherein:
R1 is C1~C6 alkyl (note that for claim 4, R1 is C2); - Q2 is a C1 alkyl chain;
a, b are independently integers from 1-5 (note that for claim 4, a is 2); and
e is 0 and d is an integer from 1-5, or e is 1 and d is 0;
Claim 1 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Touti et al (US2022/0128567; US Provisional 63/077525 filed on 09/11/2020) as evidenced by STIC result 7 of 13.
Touti et al disclose a structure of instant claim 1 (STIC result 8 of 13).
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al (US2010/0331260, published 12/30/2010).
Park et al disclose a structure of instant claim 1 (See STIC result 11 of 13).
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.
Claim Rejections - 35 USC § 103
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 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 nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Choi et al in “Vitamin C derivatives with peptides, preparation method thereof and composition comprising the same” (US Patent 7521477; US2007/0093425), as evidenced by the attached STIC structure result Answer 2 of 13 for Choi et al, in view of Gu “Preparation of L-ascorbic Acid Derivative and their application in Cosmetics” (Chemical Reagents, 2011 Vol 33, No. 4, pages 325-328; IDS ref).
Regarding claim 1, Choi et al anticipates claim 1 for reasons applied above.
Regarding claim 10, Choi et al discloses that these vitamin C derivatives have excellent antioxidant, skin wrinkle-smoothing and whitening effects while not causing skin reactions including irritation, sensitization and phototoxicity. Choi et al disclose a cosmetic containing the ascorbic acid polypeptide derivative as an active ingredient but does not explicitly disclose that an effective concentration of an ascorbic acid polypeptide derivative is about 10 to 50 ppm. Choi et al suggest studies to find cosmetic and therapeutic compositions containing the compounds as effective ingredient. (e.g. page 2, lines 20-23). Choi et al disclose concentrations of 1mM of active ingredients. (See pages 40, lines 21-26). Choi et al disclose concentrations of 0.1% (see page 45, lines 6-7). Absent evidence to the contrary, Choi et al disclose in page 50, line 13, a concentration of 10 µM which is construed to meet the limitation of about 10 to 50 ppm.
Further, Gu teach that vitamin C is a well-known whitening ingredient and has the function of promoting collagen synthesis and thus is useful for cosmetics. However, Gu teach that vitamin C is unstable (easily oxidized) and suggest vitamin C derivatives for increasing stability and better skin absorption for improved use in cosmetics. (See entire document.) However, neither Choi et al or Gu explicitly recite the claimed concentration ranges of about 10 to 50 ppm.
However, the instant specification does not teach or suggest any criticality or unexpected results associated with the claimed concentration ranges of about 10 to 50 ppm.. Therefore, absent showing of criticality, the issue of choosing different concentration range values for each component is considered a matter of optimizing the result-effective variable that is achieved through routine experimentation.
It would have been obvious to one of ordinary skill in the art at the time of the invention to optimize the concentration range values of Choi et al ascorbic acid derivatives as active ingredients in a cosmetic in order to provide a composition with good effectiveness providing the beneficial properties recited by Choi et al and Gu.
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claim 4, recites that the ascorbic acid polypeptide derivative is a compound of the following general formula:
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Such compound appears free of the prior art (See STIC structure search dated July 1, 2026 specifically for this compound).
Conclusion
No claim is allowed.
Related prior art which may be applied in a future office action if appropriate:
Touti et al (US2025/0197917; US Provisional 63/318220 filed on 03/09/2022). Touti et al disclose a structure of instant claim 1 (STIC result 5 of 13).
Adamovich et al (US2020/0092437; US Provisional 63/273485 filed on 10/29/2021. Adamovich et al disclose a structure of instant claim 1 (STIC result 6 of 13).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE S HIBBERT whose telephone number is (571)270-3053. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melissa Fisher can be reached at 571-270-7430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CATHERINE S. HIBBERT
Primary Examiner
Art Unit 1658
/CATHERINE S HIBBERT/ Primary Examiner, Art Unit 1658
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