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. 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. This office action is a response to applicant’s communication submitted November 27, 2023 , wherein claims 6-7 were preliminarily amended. Claims 1-9 are pending in this application . Priority This application is a 371 of PCT/JP2022/011172 03/14/2022 and claims foreign priority to JP 2021-093326 filed 06/03/2021 . Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been received. The Examiner notes that no English language translation has been provided. Drawings The drawings are objected to because: Figure s 1 and 3 ha ve blurry peak labels, rendering them illegible. Figure 2 has blurry X axis labels and cutoff /blurry Y axis labels, rendering them illegible. Figures 4-5 have blurry and/or overlapping peak labels, rendering them illegible. Figures 6-7 have blurry Y axis labels, rendering them illegible. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Specification The disclosure is objected to because of the following informalities: The word “Novel” should not be part of the title of the invention (See MPEP 606). Appropriate correction is required. Claim Objections Claims 1-5 and 8-9 are objected to because of the following informalities: Claims 1-5 and 8-9 are drawn to compounds/compositions of formula (I), but also recite an additional formula name that may add confusion. For example, claim 2 recites inter alia, “…the following formula (I) or a salt thereof, or a solvate thereof. [formula 2] ”. Within the same claim the compound is labeled as both “formula 2” and “ formula (I)”. In claims 1-5 and 8-9 either the period should be placed after the formula or the recited structure should be placed after the phrase “the following formula (I)”, as claims are to be a single sentence. Appropriate correction is required. Claim Interpretation With respect to instant claim s 2-3, and 6-7 which are directed to a pharmaceutical composition and recites the phrase s “ a whitening agent ”. With respect to instant claim 4 which is directed to a pharmaceutical composition and recites the phrase s “ A melanogenesis inhibitor ”. With respect to instant claim 5 which is directed to a pharmaceutical composition and recites the phrase s “ An antioxidant agent ”. With respect to instant claim 8 which is directed to a food and drink composition and recites the phrase s “ for skin whitening ”. The Examiner notes that it is well settled that “intended use” of a composition or product, e.g., “ for skin whitening ”, will not further limit claims drawn to a composition, so long as the prior art discloses the same composition comprising the same ingredients in an effective amount, as the instantly claimed (See MPEP 2111.02 (II)). Given that the claims do not include any additional elements except the compound of formula (I), the broadest reasonable interpretation of the claims is the compound itself. Claim Rejections - 35 USC § 101 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. Claims 1 -8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural product without significantly more. The claims are directed to a compound /agent/product of formula (I) which has the following structure: . Claim 1 is drawn to the compound itself. Claim 2 recites a “whitening agent comprising” the compound, which is interpreted as reciting the functional properties necessarily possessed by the compound itself and therefore encompass the compound itself. Claim 4 recites a “melanogenesis inhibitor comprising” the compound, which is interpreted as reciting the functional properties necessarily possessed by the compound itself and therefore encompass the compound itself. Claim 4 recites a “melanogenesis inhibitor comprising” the compound, which is interpreted as reciting the functional properties necessarily possessed by the compound itself and therefore encompass the compound itself. Claim 5 recites an “antioxidant agent comprising” the compound, which is interpreted as reciting the functional properties necessarily possessed by the compound itself and therefore encompass the compound itself. Therefore claims 1-2 and 4-5 do not recite any additional elements beyond the judicial exception. Claim 3 specifies the concentration of the compound in the agent, implying unspecified other material in the agent in order to result in such a concentration, however this does not possess “markedly different characteristics” because the implied unspecified other material is unspecified and the agent or compound possesses the same functional properties necessarily possessed by the compound itself, implying this activity is the same characteristic possessed the compound itself. Moreover, there is no evidence in the specification that the concentration “ 0.001 mM to 1 mM ” of the composition has markedly different characteristics from its natural state. The application in working examples 1- 3 (pgs. 22-24, paras. 0050-0051, pg. 25, para. 0056) describes the isolation of this compound of formula (I), referred to as “ Ceratonia siliqua B ”, is isolated from the pods of locust bean ( Ceratonia siliqua ), providing evidence that this compound is itself a product of nature. Rasheed ( Mariod , A. A. (ed.), Wild Fruits: Composition, Nutritional Value and Products, 2019 , cited in PTO-892) teaches the known natural products of carob or locust bean ( Ceratonia siliqua ) . A myriad of polyphenols are present in the different carob parts mostly in the fruit pulp followed by the leaves and wood (p g. 486, para . 1) . Identified metabolite classes from carob include gallic acid (1), vanillic acid (4), and gallic acid bound to glucose (20-22) (p g. 487, figure 36.2). The claimed compound of formula (I) can be read as the reaction product of vanillic acid, glucose, and gallic acid bound together, supporting the conclusion that the working examples 1- 3 of the application describe the isolation of a compound that was naturally occurring, even if not specifically known at the time of Rasheed. This judicial exception is not integrated into a practical application because claims 6-8 recite the agent or compound formulated as a skin external preparation, cosmetic, or food and drink product, respectively, in a generic level of detail which is no more than generally linking the use of the natural product to a field of use. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because claim 3 implies unspecified other material in the agent, and claims 6-8 recite the agent or compound formulated as a skin external preparation, cosmetic, or food and drink product, respectively, in a generic level of detail that would have been well-understood, routine, or conventional activity in the pertinent field of art concerning compounds or agents having a biological activity . Therefore claims 1-2 and 4-5 are drawn to the judicial exception of a product of nature itself, claim 3 is drawn to the judicial exception which is not markedly different from the product of nature, and claims 3 and 6-8 do not integrate the judicial exception into a practical application and do not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. 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 1-2 , 4-5, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kawakami (JP 2005119999 A, IDS filed November 27, 2023 , English translation relied upon by the Examiner has been provided ). Regarding claims 1-2 , 4-5, and 8: Kawakami teaches a locust bean extract extracted from locust bean (English translation, abstract) . T he locust bean extract can be used for diet foods, food additives, and pharmaceuticals (English translation, pg. 1, second to last para). T he locust bean extract (also known as carob bean extract ) can be obtained by performing the extraction process, the adsorption process, and the elution process (English translation, pg. 2, para. 7) . In the extraction step, a ground bean pulverized product or a locust bean extraction residue is extracted with a polar solvent to obtain a crude extract (English translation, pg. 2, para. 7) . Here, the crushed product of carob is obtained by chopping carob into pieces, crashing, pulverizing, etc., and these treatments make it easier to extract the extract from carob (English translation, pg. 2, para. 7) . S aid polar solvent is chosen from water, methanol, ethanol, acetone, acetonitrile, etc., or the mixture of these can be used (English translation, pg. 2, para. 9) . Next, in the adsorption step, the crude extract is passed through a column filled with a hydrophobic adsorption resin to adsorb the crude extract of carob bean contained in the crude extract (English translation, pg. 2, para. 10) . Next, in the elution step, locust bean extract is eluted through the column through a hydrophilic organic solvent , for example, methanol, ethanol, acetone, acetonitrile, or a mixture of these organic solvents and water (English translation, pg. 2, para. 11) . Kawakami is silent as to the extract containing the claimed compound of formula (I). MPEP 2112.01 especially at I. citing In re Best , 562 F . 2d 1252 , 195 USPQ 430 ( C.C.P.A. 1977) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) discusses the support of rejections wherein the prior art discloses subject matter which there is reason to believe inherently includes functions that are newly recited or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to show the products of the applicant and the prior art are not the same or that the prior art products do not necessarily possess the characteristics of the claimed product . In this case Kawakami discloses a locust bean extract extracted with a polar solvent such as water or alcohol or a mixture thereof (corresponding to the claimed hydroalcoholic extract), passed through a column filled with a hydrophobic adsorption resin to remove hydrophobic materials (functionally equivalent to liquid-liquid extraction using the hydrophobic solvent petroleum ether), and eluted through the column through a hydrophilic organic solvent such as acetone or acetonitrile (functionally equivalent to liquid-liquid extraction using the hydrophilic solvent ethyl acetate). Therefore there is reason to believe that the extraction of Kawakami necessarily includes the compound of claimed compound of formula (I). Further, MPEP 2112 at II. provides “ There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) ” In this case there is no requirement that Kawakami recognizes the presence of the claimed compound of formula (I), and a concl usion of anticipation can be supported by the reasoning above that the subject matter is in fact inherent in the prior art reference . According to the instant specification, the claimed compound has melanogenesis inhibiting action, antioxidant activity as well a s a whitening effect (pg. 6, para. 0015). Thus, the composition of Kawakami which comprises the compound, necessarily possesses these properties as p roducts of identical chemical composition cannot have mutually exclusive properties (See MPEP 2112.01 (II)). Claims 1-2 and 4- 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bergia (FR 2905857 A1, cited on PTO-892, the English translation relied upon by the Examiner has been provided ). R e garding claims 1-2 and 4-7: Bergia teaches a cosmetic composition containing an extract of carob (Ceratonia siliqua) pulp for use in a process c aring for human skin, to hydrate and/or to protect against dryness ( English translation, abstract ). This extract can be obtained using an alcoholic solvent (English translation, abstract). Bergia teaches the carob pulp extract (locust bean pulp extract) is prepared by extracting dried and ground carob pods with ethanol, the solvent is evaporated under vacuum (English translation, pg. 3, para. 5) . The extract is combined mixed with activated carbon in ethanol, filtered, and the filtrate is recovered (English translation, pg. 3, paras. 5-6) . Bergia teaches t he composition of the invention is form s suitable for topical application to the skin (English translation, pg. 4, paras. 5-7). Bergia is silent as to the extract containing the claimed compound of formula (I). MPEP 2112.01 especially at I. citing In re Best , 562 F . 2d 1252 , 195 USPQ 430 ( C.C.P.A. 1977) and In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) discusses the support of rejections wherein the prior art discloses subject matter which there is reason to believe inherently includes functions that are newly recited or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to show the products of the applicant and the prior art are not the same or that the prior art products do not necessarily possess the characteristics of the claimed product . In this case Bergia discloses dried and ground carob pods extracted with ethanol (corresponding to the claimed hydroalcoholic extract) and treated with activated carbon. Therefore there is reason to believe that the extraction of Bergia necessarily includes the compound of claimed compound of formula (I). Further, MPEP 2112 at II. provides “ There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003) ” In this case there is no requirement that Bergia recognizes the presence of the claimed compound of formula (I), and a conclusion of anticipation can be supported by the reasoning above that the subject matter is in fact inherent in the prior art reference. According to the instant specification, the claimed compound has melanogenesis inhibiting action, antioxidant activity as well a s a whitening effect (pg. 6, para. 0015). Thus, the composition of Bergia which comprises the compound, necessarily possesses these properties as p roducts of identical chemical composition cannot have mutually exclusive properties (See MPEP 2112.01 (II)). Allowable Subject Matter The following is a statement of reasons for the indication of allowable subject matter: Claim 9 would be allowable over the prior art following correction of the minor informalities described above. The closest prior art to the subject matter of claim 9 is Kawakami (JP 2005119999 A, IDS filed November 27, 2023, English translation relied upon by the Examiner has been provided) in view of Rasheed et al. (A. A. Mariod (ed.), Wild Fruits: Composition, Nutritional Value and Products, 2019 , cited in PTO-892). Kawakami teaches a method of preparing a locust bean extract as above. Kawakami does not specifically disclose a method for producing a compound represented by formula (I), or subjecting a hydroalcoholic extract with liquid-liquid extraction with petroleum ether an ethyl acetate . Rasheed et al. teaches the state of the art as detailed above. Rasheed et al. teaches known metabolite classes from carob or locust bean ( Ceratonia siliqua ). It would not have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Kawakami in a manner that arrives at the claimed invention. As detailed above, Kawakami is silent as to the extract containing the claimed compound of formula (I) and does not specifically identify what phenolic metabolite s are present in the disclosed extract. While Rasheed et al. teaches identified metabolite classes from carob include gallic acid, vanillic acid, and gallic acid bound to glucose, the combined teachings of the prior art do not provide sufficient guidance to select the claimed compound of formula (I) as a compound present in the extract of Kawakami , sufficient motivation to modify the extraction method of Kawakami in order to produce a compound which was not identified at that time to be present, or a reasonable expectation of success to produce a compound which was not identified at that time. Conclusion Claim 9 is objected to for minor informalities. No claims are allowed in this action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT SAMUEL L GALSTER whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-0933 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday - Friday 8:00 AM - 5:00 PM . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Scarlett Y Goon can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-270-5241 . 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