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 .
DETAILED ACTION
Status of the Claims
Claims 10-16 are pending and are examined on their merits.
Grammatical Errors Fixed
Applicant’s amendments to the claims in the response filed on August 20th 2026 have fixed the grammatical, idiomatic, and typographical errors noted in the non-final rejection filed on June 1st 2026.
35 U.S.C. § 112(b) Rejections Overcome by Amendment
Applicant’s amendments in the response filed on August 20th 2026 are acknowledged. Applicant has amended claim 10 to delete the generic chemical structure and remove the phrase “a type of a compound,” thus overcoming the 112(b) rejections over claim 10.
Applicant has amended claim 11 to recite a cosmetic composition comprising the compound of claim 10, thus overcoming the 112(b) rejection for claim 11.
Claims 15 and 16 have been amended to reference only the compound of claim 10, and to contain proper methodological steps, thus overcoming their associated 112(b) rejections.
The 112(b) rejections for claims 10-11 and 15-16 are thereby withdrawn.
35 U.S.C. § 112(b) Rejections Maintained
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.
The rejection of claims 12-14 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 is maintained.
Claims 12-14 are indefinite for the phrases:
wherein the small molecule compound acts as an antioxidant
wherein the small molecule compound acts as a DPPH radical scavenger
wherein the small molecule compound acts as an inhibitor of intracellular reactive oxygen species
because it is unclear how any of the phrases further limit the cosmetic composition of claim 11. In each case, an “intended use” of the compound of claim 10 is recited. However, the recitations do not further limit the compound in any way, other than reciting a particular property of the compound. In each case, this property would be inherent in the compound’s structure, and the recitation of the property would not be further limiting of the compound itself (i.e. ‘The compound of claim 10 wherein the compound acts as an antioxidant’ is not distinct from ‘the compound of claim 10 wherein the compound acts as a DPPH radical scavenger,’ ‘the compound of claim 10 wherein the compound acts as an inhibitor of intracellular reactive oxygen species,’ or ‘the compound of claim 10.’)
35 U.S.C. § 112(b) Rejections Over Claims 12-14 Reiterated
Claims 12-14 are indefinite for the phrases:
wherein, the small molecular compound serves as an antioxidant for use in cosmetics
wherein, the small molecule compound serves as a DPPH radical scavenger for use in cosmetics
wherein, the small molecule compound serves as an inhibitor of intracellular reactive oxygen species for use in cosmetics
because it is unclear how any of the phrases further limit the compound of claim 1. Specifically, each of the phrases recites an intended use for the compound of claim 10, but none recites any further limitation to the compound itself, which is defined in its entirety by the structure described in claim 10 (that is, ‘the compound of claim 10 wherein the compound serves as an antioxidant’ is not distinct from ‘the compound of claim 10’). As a compound ‘for use…’ is not patently distinct from the compound itself, claims 11-14 are indefinite.
Allowable Subject Matter
Claims 10-16 are free of the prior art.
Claims 10-11 and 15-16 are allowed.
Applicant has developed a retinoic acid derivative of the formula:
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Similar to retinoic acid, the compound has antioxidant properties and is intended to be used for cosmetic purposes due to its antioxidant properties.
Similar retinoic acid esters have been previously developed in the art in Salo (Salo et al., Biological activity and enzymatic hydrolysis of retinoates in vitro, European Journal of Pharmaceutical Sciences, Volume 3, Issue 2, 1995, Pages 71-76). However, Salo’s compounds, while also studied for their antioxidant properties, were intended for anticancer benefits. Additionally, Salo does not teach the cyclohexyl-tert-butyl group of applicant’s compound.
Claims 12-14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anthony Seitz whose telephone number is (703)756-4657. The examiner can normally be reached 7:30 AM ET - 5:00 PM ET M-F.
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/A.J.S./Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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