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 .
Response to Election/Restrictions
Applicant's election with traverse of the species: formula (I) wherein Sacc is D-glucose, X¹⁺ is Na+, and each R2 is methyl, namely sodium 1,3-dimethyl-2,6-dioxo-5-[(2S,3R,4R,5S,6R)- 3,4,5-trihydroxy-6-(hydroxymethyl)tetrahydro-2H-pyran-2-yl|-1,2,3,6-tetrahydropyrimidin-4-olate in the reply filed on 07/06/2026 is acknowledged. The traversal is on the ground(s) that the compounds are directed to a single common structural core and they all share a common utility. This is not found persuasive because FR2899463 discloses the compounds, which renders the common technical feature not special.
The species election is still deemed proper and is therefore made FINAL.
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 4-7 are ejected 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, claim 4 recites the broad recitation “organic solvent selected from the group consisting of alcohols, ketones, … or glycerides”, and the claim also recites “and is preferably selected from ethanol, propanol, … or caprate” which is the narrower statement of the range/limitation. 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.
Claim 5 recites “the oil is selected from vegetable or animal oils, and natural or synthetic mineral oils,” ”, and the claim also recites the narrower “and is preferably colza oil, essential oil of lavender, palm oil, olive oil, sunflower oil, castor oil, jojoba oil, paraffin or liquefied petroleum.”
Claim 6 recites “between 0.1% and 10%,” and the claim also recites the narrower “preferably from 1% to 5%”.
Claim 7 recites “the group consisting of alcohols, ketones, … or glycerides” and the claim also recites the narrower “and is preferably selected from ethanol, propanol, … or animal oils”, as well as “natural or synthetic mineral oils” and the claim also recites the narrower “and is preferably colza oil, … or liquified petroleum”.
For purposes of examination, the broader range will be considered.
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 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cavezza (FR2899463).
Cavezza discloses the elected compound, sodium 1,3-dimethyl-2,6-dioxo[(2S,3R,4R,5S,6R)-3,4,5-trihydroxy(hydroxymethyl)tetrahydro-2H-pyranyl]-1,2,3,6-tetrahydropyrimidinolate (see claim 9, compound 1). The working embodiments include a cream having compound 1 at 0.5%, cetyl alcohol at 0.7%, apricot oil at 2% (pg 17).
Examiner notes that instant claims 1-2 are directed to an “agent” which comprises the compound. As such, where the compound is disclosed in the art, the claim is anticipated where the compound is inherently capable of any intended use. See MPEP 2111.02.
With regards to claims 7-9, the compounds are added to an assay which includes glycerol and heated (¶ 16). While these claims are the only claims which actually require the organogel or olegel, and it is not disclosed in the prior art, where the same steps instantly claimed are satisfied, it appears the gel will inherently form absent evidence to the contrary.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over by Cavezza (FR2899463) in view of Seidenkranz et al (Supramol. Chem, 2019, 31:8, 499-507).
Cavezza is discussed above, but in case the translation is not fully correct, is cited to correct any deficiencies.
Seidenkranz teaches organogels may be derived from barbituric acid derivatives but does not disclose the instantly claimed Sacc group.
Where Cavezza discloses barbituric acid derivatives, it would have been obvious to use them to formulate known compositions, such as the organogels taught by Seidenkranz.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN J PACKARD whose telephone number is (571)270-3440. The examiner can normally be reached Mon 2-6pm and Tues-Fri 9:30am-6:30pm + mid-day flex.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana S. Kaup can be reached at (571) 272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN J PACKARD/ Primary Examiner, Art Unit 1612
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