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 .
Claims 1-22 are pending in the instant application. Claims 1-22 are rejected. Claims 4, 5, 16-18, and 20 are objected.
Information Disclosure Statements
The information disclosure statements filed on July 10, 2024 and January 18, 2025 have been considered and signed copies of form 1449 are enclosed herewith.
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 19, 20 and 22 are rejected under 35 U.S.C. § 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. § 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131,149 USPQ 475 (D.D.C. 1966).
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 1-4 and 6-22 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 2, 3, 4, 8, and 9, recite the broad recitations “1 or 2 heteroatoms,” “R1 and R2 are independently chosen from -H, -CH3 and -CH2CH3,” “R is chosen from the following groups of formula (a), (b), (c), (d), (e), (f), (g), (h), (i), (1),” “HSP90 inhibitor,” and “HSP90 inhibitor,” and the claims also recite “preferably independently selected from N and S,” “more preferably R1 and R2 are both -H,” “preferably R is the group of formula (a),” “more preferably HSP90α inhibitor,” and “more preferably HSP90α inhibitor,” respectively, which are narrower statements of the ranges/limitations. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. This rejection can be overcome, for example, by amending the claims to delete the phrases following the word “preferably” or the phrase “more preferably” from the claims.
Regarding claims 1, 17 and 19, the phrase "such as" renders the claims indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). This rejection can be overcome, for example, by amending the claims to delete the phrase “such as morpholine or piperidine” from the claims.
Regarding claim 16, the word "including" renders the claim indefinite because it is unclear whether the limitations following the word are part of the claimed invention. See MPEP § 2173.05(d). This rejection can be overcome, for example, by amending the claim to delete the word “including” and limitations which follow from the claim.
Specifically, claims 19, 20 and 22 are drawn to the cosmetic use of compounds of formula (I) or cosmetically acceptable salts or hydrates thereof and the cosmetic use of the cosmetic composition comprising at least one compound of formula (I) or cosmetically acceptable salts or hydrates thereof and at least one cosmetically acceptable excipient, but since the claims do not set forth any steps involved in the methods/processes, it is unclear what methods/processes Applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. 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.
Claims 1-15 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 96/36638 A1.
WO 96/36638 A1 discloses the compound 1-benzyl-3-(2-methylphenyl)xanthine or
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(see claim 8), pharmaceutical compositions thereof (see claim 11) and a method for treating a disease state capable of being modulated by inhibiting TNF, such as an inflammatory disease or autoimmune disease (see claims 16 and 17). It is also disclosed in the reference that the compound may be administered as a topical formulation (i.e., ointments, creams or locations, etc.). See page 21, lines 8-30. Therefore, a compound of the claims wherein R is phenyl and R1 and R2 are -H, a pharmaceutical composition thereof and a cosmetic composition thereof of the claims are anticipated by the reference.
With respect to the art rejection above over claims 8-15, it is noted that the reference does not teach that the compound or a pharmaceutical composition thereof can be used in the manner instantly claimed (i.e., for use as HSP90 inhibitor, in selectively killing senescent cells, in delaying aging in a subject, or in the treatment and/or prevention of a senescence-associated disease or disorder). However, the intended uses of the claimed compound and compositions thereof do not patentably distinguish the compound and compositions thereof, per se, since such disclosed uses are inherent in the reference compound and compositions thereof. In order to be limiting, the intended uses must create a structural difference between the claimed compound and compositions thereof and the prior art compound and compositions thereof. In the instant case, the intended uses do not create a structural difference, thus the intended uses are not limiting.
Claims 1-5, 8, 10, 12, 14, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Montana et al. (Bioorganic & Medicinal Chemistry Letters 8 (1998) 2925-2930).
Montana et al. discloses compound 2a (see Table 2 on page 2927), which is a selective PDE4 inhibitor (see abstract), and its synthesis (see Scheme 1 on page 2929). Therefore, a compound of the claims wherein R is phenyl and R1 and R2 are -H and a method for preparing the compound of the claims are anticipated by the reference.
With respect to the art rejection above over claims 8, 10, 12, and 14, it is noted that the reference does not teach that the compound can be used in the manner instantly claimed (i.e., for use as HSP90 inhibitor, in selectively killing senescent cells, in delaying aging in a subject, or in the treatment and/or prevention of a senescence-associated disease or disorder). However, the intended uses of the claimed compound does not patentably distinguish the compound, per se, since such disclosed uses are inherent in the reference compound. In order to be limiting, the intended uses must create a structural difference between the claimed compound and the prior art compound. In the instant case, the intended uses do not create a structural difference, thus the intended uses are not limiting.
Claim Objections
Claims 4, 5, 17, 18, and 20 are objected to because of the following informalities: a period is missing at the end of the claims. Appropriate correction is required.
Claim 16 is objected to for depending on claim 1, which does not disclose a use in treatment and/or prevention of a senescence-associated disease or disorder. It is believed that Applicant intended for the claim to depend on claim 14. Appropriate correction is required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTIN ANN VAJDA whose telephone number is (571)270-5232. The examiner can normally be reached Mon-Fri 6:00-4:00.
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/KRISTIN A VAJDA/Primary Examiner, Art Unit 1622
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