DETAILED CORRESPONDENCE
This office action is in response to applicant’s filing dated December 2, 2025.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of Claims
Claims 1-3, 5-9, 12-21, and 23-28 are pending in the instant application. Acknowledgement is made of Applicant's remarks and amendments filed July 21, 2025. Acknowledgement is made of Applicant’s amendment of claims 1, 2, 15-17, and 20; cancelation of claims 4, 10, 11, and 22; and addition of new claim 28.
Applicants elected without traverse Group I, drawn to a composition comprising, in a physiologically acceptable oily medium, 4-3(ethoxy-4-hydroxyphenyl)-2-butanone and an organic solvent with solubility parameters in the Hansen solubility space such that 4.5< δa<7 and 14< δd<22 as the elected invention and (i) capric/caprylic acid triglycerides as the elected organic solvent species and (ii) polydimethylsiloxane as the additional oil species in the reply filed on November 11, 2014. The requirement is still deemed proper. Claim 9 remains withdrawn.
New claim 28 is directed to the elected species. Thus, claim 28 is presently under examination.
Claims 1-3, 5-8, 12-21, and 23-28 are presently under examination as they relate to the elected species (i) capric/caprylic acid triglycerides and (ii) polydimethylsiloxane.
Priority
The present application is a national stage entry of PCT/EP12/55658 filed on March 29, 2012 which claims benefit of US Provisional Application No. 61/499,707 filed on June 22, 2011. The present application also claims benefit of foreign priority to France 1152788 filed on April 1, 2011. The effective filing date of the instant application is June 22, 2011.
Modified Objections and/or Rejections
Modifications Necessitated by Claim Amendment
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-2, 5-7, 12-18, 20, 21, 24-26, and 28 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Weidner (US 2002/0051800 A1, cited in a previous Office Action) in view of Berlin et al (J Gen Chem of USSR, 1949; 19:1-10, cited in a previous Office Action).
The instant claims require a composition comprising 4-3(ethoxy-4-hydroxyphenyl)-2-butanone, hereinafter referred to as Compound A:
Compound A
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and a physiologically acceptable oily medium.
Regarding claims 1 and 2, Weidner teaches a cosmetic use of a mixture comprising zingiber officinale components and a cosmetically acceptable vehicle (claim 19); and a cosmetic composition comprising zingerone and a cosmetically acceptable vehicle (claims 1 and 2). Weidner teaches vehicles include isopropyl myristate [104-105].
Weidner does not explicitly teach a composition comprising 4-3(ethoxy-4-hydroxyphenyl)-2-butanone.
However, Berlin teaches derivatives of zingerone (title); and teaches 4-hydroxy-3-ethoxyphenyl ethyl methyl ketone (I) is a homologue of zingerone (page 1, 2nd and 3rd paragraphs):
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Compound (I) taught by Berlin is equivalent to the instantly claimed 4-3(ethoxy-4-hydroxyphenyl)-2-butanone.
The structure for zingerone is
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, while this is not identical to the claimed compound
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, it is noted that these compounds are homologs of each other and the only difference is a CH2 group. Therefore, while the compounds are not identical, they are sufficiently close in structure that one of skill in the art would expect such compounds to possess similar properties, thus it would be obvious to make and use the claimed compounds in a cosmetic composition with a reasonable expectation of success, absent factual evidence to the contrary.
MPEP 2144.09: A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. “An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties.” In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963) (discussed in more detail below) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991) as is stated in MPEP 2144.09.
Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious).
At the time of the invention it would have been prima facie obvious for a person of ordinary skill in the art to utilize solvents taught as useful for a composition comprising Zingerone including isopropyl myristate as taught by Weidner for a composition comprising the homologue Compound (I) taught by Berlin, resulting in a composition comprising Compound A and isopropyl myristate with an expectation of success, since the compounds which are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
With regard to the amount of 4-3(ethoxy-4-hydroxyphenyl)-2-butanone of claims 1, 5, and 15-17, Weidner teaches Zingiber official Roscoe extract or component thereof in the composition is typically at least 2.5% [0084]. With regard to the claimed amounts of organic solvent of claims 1 and 12-14, Weidner teaches glyceryl monostearate and isopropyl myristate are alternatively useful vehicles that can be included in the composition and teaches a cosmetic composition comprising an extract of Zingiber Officinale Roscoe and glyceryl monostearate, wherein glyceryl monostearate is in the amount of 2.0% [0118]. It would have been obvious to one of ordinary skill in the art to utilize the amounts of zingerone taught by Weidner as a starting point to optimize the amount of 4-3(ethoxy-4-hydroxyphenyl)-2-butanone in formulating a composition comprising 4-3(ethoxy-4-hydroxyphenyl)-2-butanone. Moreover, it would be obvious to one of ordinary skill in the art to utilize the amount of glyceryl monostearate as a starting point for optimizing the amount of isopropyl myristate, based on the fact that the prior art establishes that glyceryl monostearate and isopropyl myristate are alternatively useful as an emollient vehicle in compositions comprising zingerone, a known homologue of Compound I.
Regarding the limitation, whereby the 4-(3-ethoxy-4-hydroxyphenyl)-2- butanone is solubilized in the composition due to the organic solvent and is not recrystallized after storage for two months at 25°C; and wherein the composition is in the form of a facial care cream, or a body milk, the prior art does not explicitly teach the disclosed composition is the 4-(3-ethoxy-4-hydroxyphenyl)-2- butanone is solubilized in the composition due to the organic solvent and is not recrystallized after storage for two months at 25°C; and wherein the composition is in the form of a facial care cream, or a body milk. However, the above stability and functional properties depend, among other things, from the specific components, relative amounts, type of formulation, and pH of the formulation etc., all of which seem to be the same or very similar to the composition made obvious by the prior art (see above rejection).
The office does not have the facilities and resources to provide the factual evidence needed in order to establish that the formulations comprising 4-3(ethoxy-4-hydroxyphenyl)-2-butanone and isopropyl myristate that will result from the teachings of the prior art does not possess the same material, structural and functional characteristics of the formulation claimed in the instant application. In the absence of evidence to the contrary, the burden is on the applicant to prove that the formulation used in the instantly claimed method is different from those taught by the prior art and to establish patentable differences. See In re Best 562F.2d 1252, 195 USPQ 430 (CCPA 1977) and Ex parte Gray 10 USPQ 2d 1922 (PTO Bd. Pat. App. & Int. 1989).
Taken together, all this would result in the composition of claims 1, 2, 5, and 12-17 with a reasonable expectation of success.
Regarding the mass ratio of instant claims 6, 18, 20, 24, 25, and 28, the cited art does not explicitly teach the organic solvent and Compound I are in a solvent/compound I mass ratio of less than or equal to 10. However, as set forth above, it would be obvious to one of ordinary skill in the art to utilize the amount of glyceryl monostearate (e.g. 2.0%) as a starting point for optimizing the amount of isopropyl myristate and to utilize the amount of Zingiber officinale Roscoe or parts and component thereof such as zingerone as a starting point for optimizing the amount of Compound I (e.g. 2.5%). An amount of 2.0% of isopropyl myristate and an amount of 2.5% of Compound I would give a composition with a solvent/Compound ratio of 0.8 which is less than or equal to 10. It would be obvious to one of ordinary skill in the art to utilize the ratio of solvent/ Zingiber officinale Roscoe or parts and component thereof such as zingerone as a starting point to optimize the ratio of solvent/Compound I, based on the fact that the prior art establishes that Compound I is a known homologue of zingerone and compounds which are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
MPEP 2144.05 states: In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Even a slight overlap in range establishes a prima facie case of obviousness. In re Peterson, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003).
Regarding the amounts of 4-3(ethoxy-4-hydroxyphenyl)-2-butanone and isopropyl myristate of instant claim 26, as set forth above, it would have been obvious to one of ordinary skill in the art to utilize the amounts of zingerone taught by Weidner as a starting point to optimize the amount of 4-3(ethoxy-4-hydroxyphenyl)-2-butanone in formulating a composition comprising 4-3(ethoxy-4-hydroxyphenyl)-2-butanone. Moreover, it would be obvious to one of ordinary skill in the art to utilize the amount of glyceryl monostearate as a starting point for optimizing the amount of isopropyl myristate, based on the fact that the prior art establishes that glyceryl monostearate and isopropyl myristate are alternatively useful as an emollient vehicle in compositions comprising zingerone, a known homologue of Compound I.
Taken together, all this would result in the practice of the method of claims 6, 18, 20, 24-26, and 28 with a reasonable expectation of success.
With regard to claim 7, Weidner teaches vehicles other than water can be used singly or as mixture of one or more vehicles and include dimethylipolysiloxane. Dimethylipolysiloxane reads on the elected polydimethylsiloxane. It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the invention to substitute zingerone in the composition comprising isopropyl myristate and polydimethylsiloxanes disclosed by Weidner for a structural homolog of zingerone, such as Compound A with an expectation of success, since the compounds which are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties, thus resulting in the composition of the claims 7, with a reasonable expectation of success.
Regarding claim 21, Weidner teaches vehicles other than water can be used singly or as mixture of one or more vehicles and include solvents such as water and glycerol ([0104] and [0106]). At the time of the invention it would have been prima facie obvious for a person of ordinary skill in the art to substitute zingerone in the composition comprising isopropyl myristate and water and/or glycerol disclosed by Weidner for a structural homolog of zingerone, such as Compound A with an expectation of success, since the compounds which are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties, thus resulting in the composition of claims 21 with a reasonable expectation of success.
Claims 3, 8, 19, 22, 23 and 27 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Weidner (US 2002/0051800 A1, cited in a previous Office Action) in view of Berlin et al (J Gen Chem of USSR, 1949; 19:1-10, cited in a previous Office Action) as applied to claims 1-2, 5-7, 12-18, 20, 21, 24-26, and 28 above, and further in view of Zhang et al (WO 2010/045415 A2, cited in a previous Office Action).
The combination of Weidner and Berlin teach all the limitations of claims 3 and 19 (see above 103), except wherein the organic solvent is the elected organic solvent, capric/caprylic acid triglycerides.
As set forth above, Weidner teaches vehicles such as isopropyl myristate.
Zhang et al teach a topical pharmacological composition comprising at least one sensate agent (claim 1) wherein the sensate agent includes zingerone (claim 5); zingerone is equivalent to 4,(4-hydroxy-3-methoxyphenyl)butan-2-one. Zhang teaches the topically administrable vehicle comprises an emulsion gel (claim 25); and an emulsion gel system comprising the aqueous gel to which are added an emulsifier, and an emollient or oil (page 17, lines 8-10), wherein the fatty phase constituents (including lipids or emollients) can be of a vegetable or animal nature and also partly or completely synthetic, and include glycerides and waxes (page 18, lines 20-29). Zhang teaches waxes are defined as fatty acid esters but, instead of glycerin, there are suitable as alcohol components; and waxes include isopropyl myristate and caprylic/capric acid esters of saturated fatty alcohols (page 21, lines 10-19). Zhang teaches glycerides are intended to mean fatty acid esters of glycerin and semi-synthetic and completely synthetic glycerides include caprylic/capric acid triglyceride (page 20, lines 2-3). Thus, Zhang teaches isopropyl myristate and caprylic/capric acid triglyceride are alternatively useful as an emollient in compositions comprising zingerone. Before the effective filing date of the invention, it would have been prima facie obvious for a person of ordinary skill in the art to substitute isopropyl myristate with the emollient, caprylic/capric acid triglyceride with an expectation of success, since the prior art establishes isopropyl myristate and caprylic/capric acid triglyceride are alternatively useful as an emollient in compositions comprising zingerone and based on the fact that the prior art establishes that Compound A is a known homologue of zingerone and compounds which are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
Taken together, all this would result in the composition of claims 3 and 19 with a reasonable expectation of success.
With regard to claim 8, Weidner teaches the compositions can be formulated in the form of emulsions [0113]. Weidner does not explicitly teach a composition in the form of a water-in-oil or oil-in-water emulsion; however, all emulsions are either water-in-oil or oil-in-water. Moreover, Zhang teaches a composition combining properties of gel with those of an oil/water emulsion are well known in the art (page 17, lines 20-24). Moreover, Zhang teaches an embodiment wherein the composition comprises an emulsion gel system comprising the sensate agent, at least one solvent which is water, a thickener, to which is added an emulsifier and an emollient or oil. The emulsifier and emollient/oil are added to water, which would result in an oil-in-water or water-in-oil emulsion depending on the amounts of oil and water admixed. It would have been obvious to one of ordinary skill in the art to formulate the composition comprising Compound A in similar gel emulsions taught for zingerone, resulting in the composition of claim 8 with a reasonable expectation of success.
Regarding claim 23, Weidner teaches vehicles other than water can be used singly or as mixture of one or more vehicles and include solvents such as glycerol ([0104] and [0106]). Moreover, Zhang teaches the function of the co-solvent is to maintain the active ingredient left behind on the skin in solution; in addition, the co-solvent must be miscible with the aqueous-alcoholic phase; suitable for this purpose are, for example, polyhydric alcohols, such as glycerin (page 18, lines 11-14). Glycerin reads on glycerol. At the time of the invention it would have been prima facie obvious for a person of ordinary skill in the art to substitute zingerone in the composition comprising capric/caprylic triglycerides and glycerol disclosed by Zhang for a structural homolog of zingerone, such as Compound A with an expectation of success, since the compounds which are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties, thus resulting in the composition of claims 23 with a reasonable expectation of success.
Regarding claim 27, as set forth above, Weidner teaches compositions can be formulated in the form of emulsions and emulsifier and emollient/oil are added to water, which would result in an oil-in-water or water-in-oil emulsion. Weidner does not teach the emulsifier is in the amount of 0.5% to 20% by weight relative to the total weight of the emulsifier or that the oil phase of the emulsion is 5% to 50%. However, as set forth above, Zhang teaches isopropyl myristate and caprylic/capric acid triglyceride are alternatively useful as an emollient in compositions comprising zingerone. Moreover, Zhang teaches compositions comprising 5-75% of one or more nonaqueous solvents; 2-30 wt% of emollients; 1-10% of an emulsifier (page 28, lines 16-19). It would be obvious to one of ordinary skill in the art to utilize the amount of emulsifier and emollient taught by Zhang as a starting point for optimizing the amount of emollient (caprylic/capric acid triglyceride) and emulsifier utilized to produce a composition comprising Compound I, caprylic/capric acid triglyceride, and an emulsifier with a reasonable expectation of success, since the prior art teaches these excipients as suitable excipients for producing a composition comprising a structurally similar compound and because amounts are result-effective variables, i.e. a variable that achieves a recognized result. Therefore, the determination of the optimum or workable amounts would have been well within the practice of routine experimentation by the skilled artisan. Furthermore, absent any evidence demonstrating a patentable difference between the compositions and the criticality of the claimed amounts, the determination of the optimum or workable amounts given the guidance of the prior art would have been generally prima facie obvious to the skilled artisan. Please see MPEP 2144.05 [R-2](II)(A) and In re Aller, 220 F. 2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). ("[W]here the general conditions of claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.").
Taken together, all this would result in the composition of claims 27 with a reasonable expectation of success.
Response to Arguments
Applicant argues:
Weidner is concerned with mixtures comprising at least one of the fatty acids eicosapentaenoic acid (20:5n3) and docosahexaenoic acid (22:6n3) and the plant Zingiber officinale Roscoe or parts thereof or an extract or a component thereof and pharmaceuticals, dietary supplements or cosmetic compositions containing such mixtures, and to their use for preparing a medicament or a dietary supplement for the suppression of hypersensitivity and/or inflammatory reaction. Weidner discloses that Zingiber officinale Roscoe contains several phenolic compounds, most of which have a characteristic hydroxy-methoxy-phenyl moiety and that they are responsible for the pungency of ginger. Weidner clarifies that" ... the therapeutic effect of Zingiber officinale Roscoe is derived from the ability of certain components to inhibit the generation of eicosanoids through a direct inhibition of cyclooxygenase and 5-lipoxygenase. The therapeutic efficacy of Zingiber officinale Roscoe is limited strongly by the fact that its pharmacologically active components are only mild inhibitors of eicosanoid generation." Accordingly, persons of ordinary skill in the art would not be led or motivated to deviate from the Zingiber officinale Roscoe or the specifically disclosed possible extracts or components thereof and reasonably expect that such would inhibit the generation of eicosanoids through a direct inhibition of cyclooxygenase and 5-lipoxygenase, as required by Weidner. For instance, the cited art does not teach that 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone inhibits the generation of eicosanoids through a direct inhibition of cyclooxygenase and 5-lipoxygenase as required by Weidner.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
As set forth above, Weidner teaches a composition comprising zingerone and a cosmetically acceptable vehicle, and a vehicle isopropyl myristate. Thus, Weidner is directed to cosmetic compositions comprising zingerone. Weidner teaches Zingiber officinale Roscoe contains a number of phenolic compounds, most of which have a characteristic hydroxy-methoxy-phenyl moiety; these compounds are responsible for the pungency of ginger [0016]. However, Weidner does not teach that the pungency is required for the disclosed compositions. As set forth above, since Berlin teaches Compound I is a known compound and a homologue of zingerone, and since Weidner teaches that isopropyl myristate is a suitable vehicle for compositions comprising zingerone, at the time of the invention it would have been prima facie obvious for a person of ordinary skill in the art to utilize the vehicles taught as suitable for compositions comprising zingerone as a vehicle for compositions comprising Compound I with an expectation of success, since the prior art establishes that Compound I is a known homologue of zingerone and compounds which are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
The Examiner notes that the Examiner was previously affirmed in the Decision on Appeal of 14/007,520 mailed March 3, 2020. Weidner was also cited in the rejection set forth in the previously appealed case. Declaration from the previously appealed case has also been provided in the instant case to support differences between Compound 1 and zingerone. Moreover, in the Decision in reference to similar arguments regarding Weidner, the Board concluded that:
Appellant has not identified persuasive evidence in the record showing that these differences would have suggested to a person of ordinary skill in the art that substituting zingerone with ethyl gingerone would have rendered Weidner' s compositions unsuitable for their intended use.
The Examiner notes that this point was reiterated in the instant case in the Decision on Appeal dated May 22, 2025.
Furthermore, the Board in the Decision of ‘520 concluded that:
Appellant has not pointed to persuasive evidence in Weidner or in the record suggesting that this synergy or the desired activity of Weidner's compounds-i.e., suppression of hypersensitivity and/or inflammatory reactions-is correlated with or depends upon the property of pungency.
In the instant case, the fact pattern is the same and thus the Board’s conclusions in the previously appealed case as well as in the appeal in the instant case also apply in the instant claims.
Applicant argues:
The present invention further patentably distinguishes over the cited art and especially over Weidner since the present invention relates to a non-therapeutic cosmetic composition as contrasted to a therapeutic cosmetic composition. On the other hand, Weidner is concerned with therapeutic compositions and therapeutic uses. Weidner is especially concerned with the therapeutic effect of the plant Zingiber officinale Roscoe or parts thereof or an extract or a component thereof, which is discussed throughout Weidner. Persons of ordinary skill in the art would readily appreciate that the reference to cosmetic compositions in Weidner is indeed to therapeutic cosmetic compositions as distinguished from non-therapeutic cosmetic compositions. The recitation "non-therapeutic cosmetic composition" breathes life and meaning into the claims. For instance, the term "non-therapeutic cosmetic composition" excludes compositions that contain ingredients and/or relative amounts thereof that render the composition unsuitable as a non-therapeutic cosmetic composition such as including an active ingredient in an amount resulting in a therapeutic composition. Also, the phrase "non-therapeutic cosmetic composition" excludes compositions that contain components and/or relative amounts thereof that render the composition unsuitable as a non-therapeutic cosmetic composition.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
In response to Applicant’s argument that the present invention relates to a non-therapeutic cosmetic composition, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Moreover, in the Decision on Appeal of the instant application dated May 22, 2025, the Board concluded that Appellant does not direct us to persuasive evidence of record supporting that the recitation “non-therapeutic” requires excluding certain components or amounts of compounds. Absent further context in the Specification and explanation from Appellant, we cannot discern what components and/or quantities of components Appellant contends are excluded by the term “non-therapeutic.” The Board further concluded that even assuming the term “non-therapeutic” is a limitation, it does not serve to distinguish claim 1 over Weidner because it is not clear what components of Weidner’s composition would be excluded. The Board further concluded that the preamble does not limit the scope of the claims and thus is not afforded patentable weight.
Applicant argues:
Weidner mentions that vehicles other than water that can be used in compositions that can include solids or liquids such as emollients, solvents, humectants, thickeners and powders. Accordingly, Weidner entirely consistent with the art clearly distinguishes between emollients and solvents. In addition, to the emollients and solvents as possible vehicles, Weidner mentions additional excipients. Weidner fails to disclose or suggest that the solvents of the type required by the present invention would be suitable in overcoming problems addressed by the present invention. This is especially so since Weidner is not concerned with the solubility problems addressed by the present invention. Persons of ordinary skill in the art would not be motivated to look for a solvent different from those disclosed therein since nothing in Weidner suggests the existence of such problem with respect to the therapeutic agents alluded to therein.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
Weidner teaches vehicles include isopropyl myristate [104-105]. Isopropyl myristate reads on an organic solvent with solubility parameters in the Hansen solubility space such that 4.5 < δa < 7 and 14 < δd < 22 as evidenced by instant claim 2, which depends from and thus further limits claim 1, and lists isopropyl myristate as an organic solvent. As set forth above, before the effective filing date of the invention, it would have been prima facie obvious for a person of ordinary skill in the art to utilize solvents taught as useful for a composition comprising Zingerone including isopropyl myristate as taught by Weidner for a composition comprising the homologue Compound (I) taught by Berlin, resulting in a composition comprising Compound A and isopropyl myristate with an expectation of success, since the compounds which are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
The Examiner notes that the Board agreed with the Examiner’s conclusion in the Decision on Appeal of 14/007,520 mailed March 3, 2020 that it would have been prima facie obvious to one of ordinary skill in the art to have selected from the list of vehicles disclosed in Weidner to arrive at a composition comprising Compound I in view of the unambiguous disclosure of each particular species of vehicle as suitable vehicles for formulating a composition comprising zingerone.
Applicant argues:
4-(3-ethoxy-4-hydroxyphenyl)-2-butanone is only very sparingly dissolved in glycerol and water, and an object of the present invention is to address this problem and an object of the present invention is to address this problem. 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone is “very satisfactorily dissolved” in solvents according to the present invention and only very sparingly dissolved in water, 2-ethylhexyl palmitate and 2-octyldodecanol. The 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone was soluble in solvents according to the present invention in amounts of significantly greater (e.g., more than twice) than in 2-ethylhexyl palmitate and 2-octyldodecanol. No evidence exists disclosing that zingerone is soluble in any of the claimed solvents. The only example (Example 2) in Weidner that employs a solvent uses water. Nothing at all in Weidner would have led or motivated a person of ordinary skill in the art to have selected the claimed compounds as solvents to address the solubility problem, which is an objective of the present invention. If anything, persons of ordinary skill in the art would have been led to select water since it is used in the Example 2 and nothing is disclosed in Weidner to suggest that any material different result would be achieved depending upon the selection of the solvent, when used. Furthermore, instead of referring to any of the solvents mentioned in Weidner, the Examiner resorts to relying upon isopropyl myristate, which is mentioned as one of the emollients in Weidner. In other words, Weidner refers to isopropyl myristate not as a solvent for the compositions therein, but instead for the different purpose or function as an emollient. Please keep in mind that it is well known in the art, that various ingredients function in vastly different ways in different compositions depending upon the other ingredients present and the relative amounts. Accordingly, persons of ordinary skill in the art would not have found it obvious to use the emollients suggested in Weidner such as the isopropyl myristate as a solvent.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
While the reference may not be anticipatory insofar as one must select zingerone from various possible components of the plant Zingiber officinale Roscoe and isopropyl myristate from various solvents as taught in Weidner, it remains that it would have been obvious to a person of ordinary skill in the art, to have selected this particular compound detailed supra from the list of components of the plant Zingiber officinale Roscoe, and isopropyl myristate from the solvents taught. The skilled person would have been motivated to do so by the unambiguous disclosure of each particular species of components of the plant Zingiber officinale Roscoe and solvents individually and alternatively as equally useful in formulating a composition comprising zingiber. This conclusion is supported by the fact that it has long been held in patent prosecution that a reference should be considered as expansively as is reasonably possible in determining the full scope of the contents within its four corners. As set forth above, Berlin teaches the claimed compound and Weidner is directed to cosmetic compositions comprising a structural homolog of the instantly claimed compound which is also useful for cosmetic compositions. Thus, the prior art relates to the same field as the Applicant’s endeavor. The Examiner acknowledges that cosmetic compositions encompass a broad technology area, however the compositions of Weidner are directed to cosmetic compositions comprising a structural homolog of the instantly claimed compound which is also useful for cosmetic compositions. The compositions of the prior art are within the field of Applicant’s endeavor not only because they are cosmetic compositions but also because they comprise structurally similar compounds. As set forth above, one of ordinary skill in the art would reasonably expect that structurally similar compounds useful in cosmetic compositions would possess similar solubilities in certain solvents and would have been motivated to utilize solvents that are taught as suitable solvents for zingerone to produce compositions with the structural homolog of the instant claims.
Applicant argues:
Weidner does not even disclose zingerone as a component of the Zingiber officinale Roscoe extracts used in the examples therein. Example 1 is the only example in Weidner that identifies components of the extract and zingerone is not even mentioned. A person of ordinary skill in the art would not have been motivated to replace zingerone and/or any of the therapeutic agents in Weidner with 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone since the cited art does not disclose that the 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone has the therapeutic activity required by the Zingiber officinale Roscoe or the specifically disclosed possible extracts or components thereof.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
Weidner explicitly teaches a cosmetic composition comprising an extract or component of Zingiber officinale Roscoe (claim 1) wherein the component of Zingiber officinale Roscoe is zingerone (claim 2). Thus, as set forth above, Weidner explicitly teaches a composition comprising zingerone. As set forth above, while the compounds are not identical, they are sufficiently close in structure that one of skill in the art would expect such compounds to possess similar properties, thus it would be obvious to make and use the claimed compounds in a cosmetic composition with a reasonable expectation of success. Furthermore, at the time of the invention it would have been prima facie obvious for a person of ordinary skill in the art to utilize solvents taught as useful for a composition comprising Zingerone including isopropyl myristate as taught by Weidner for a composition comprising the homologue Compound (I) taught by Berlin, resulting in a composition comprising Compound A and isopropyl myristate with an expectation of success, since the compounds which are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. Moreover, in the Decision on Appeal of the instant application dated May 22, 2025, the Board agreed with the Examiner that the two compounds “are sufficiently close in structure that one of skill in the art would expect such compounds to possess similar properties, thus it would be obvious to make and use the claimed compounds in a cosmetic composition with a reasonable expectation of success.”
Applicant argues:
Zingerone and 4-(3-ethoxy-4-hydroxyphenyl)butan-2-one do not exhibit similar properties. All evidence should be considered in evaluating the non-obviousness of the invention. Furthermore, when evidence of non-obviousness is present, the Office should reconsider any initial obviousness determination in view of the entire record. Khimii, presently cited, was concerned with certain derivatives of zingerone; only one of the tested compounds, 4-hydroxy-3-methoxybenzyl ethyl ketone (VIII) produced a stinging sensation that was about as strong as that of zingerone; the other tested compounds had almost no biting taste; This demonstrates that 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone, (4-hydroxy-3-ethoxyphenyl ethyl methyl ketone (I) of Zhurnal Obshchey Khimii), and zingerone do not possess similar properties. Declaration under 37 CFR § 1.132 by Veronique Chevalier (Exhibit B) (initially filed in Application 14/007,520) shows that 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone is only very sparingly soluble in glycerin. Contrary to this, the test results from using zingerone verify that it is soluble in glycerin in all of the tested amounts. EP 2,327,393 to Heuser et al is further evidence that 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone and zingerone have dissimilar solubility characteristics whereby zingerone is soluble in glycerol. Ahmed M Galal discloses gingerone (compound 9) was found to be inactive. This illustrates that gingerone (or zingerone) does not have similar properties as 4-(3-ethoxy-4-hydroxyphenyl)butan-2-one as a preserving agent for cosmetic compositions. Declaration under 37 CFR 1.132 by Dr. Sylvie Cupferman (initially filed in Application 16/894,258, now US Patent 11,169,437) (Exhibit F), wherein Dr. Cupferman verified that gingerone was not active against any of the organisms tested.
Berlin was relied upon for a disclosure of 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone.
Berlin is completely silent with respect to the solubility of 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone in the claimed compounds. Accordingly, persons or ordinary skill in the art concerned with the problems addressed by the present invention would not even look to Berlin to address those problems. Instead, Berlin was concerned with certain derivatives of zingerone and the effect due to changes in the molecular structure of the zingerone. The test results in Berlin demonstrate that 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone and zingerone do not possess similar properties. Accordingly, Berlin leads away from the present invention. Further demonstrating that zingerone and the compound employed according to present invention do not possess the same or similar properties, is M. Winter. The discussion in Winter with respect to the organoleptic evaluation of zingerone and the compound employed according to the present invention, teach that it is known that zingerone has a taste stronger than the taste of compound employed according to the present invention, further demonstrating that these two compounds are not similar to each other.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
MPEP 716.02 states:
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986) (differences in sedative and anticholinergic effects between prior art and claimed antidepressants were not unexpected). In the instant case, the specification demonstrates that claimed compound, 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone possesses different solubilities in different solvents. It is not unexpected that different solvents result in different properties. As set forth above, the cited art renders obvious a composition comprising the claimed compound and isopropyl myristate. The data in the specification does not support that the claimed compound is unexpectedly more soluble in the elected solvent isopropyl myristate compared to structurally similar compounds such as zingerone.
The Examiner acknowledges that it appears that zingerone and 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone have different solubilities in glycerol. While differences in solubility in certain solvents would not be unexpected, one of ordinary skill in the art would reasonably expect that structurally similar compounds would possess similar solubilities in many solvents. Zingerone and 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone were both known in the prior art, per Berlin and Marion. The compounds differ by a single methylene (CH2) group, and thus are adjacent homologs. In re Dillon, 919 F.2d at 703 n.6 (defining adjacent homologs as compounds that differ by a single methylene group). Weidner discloses topical compositions comprising zingerone, as well as compositions comprising solvents including isopropyl myristate, which falls within claim 1. As set forth above, one of ordinary skill in the art would reasonably expect that structurally similar compounds useful in cosmetic compositions would possess similar solubilities in certain solvents and would have been motivated to utilize solvents that are taught as suitable solvents for zingerone to produce compositions with the structural homolog of the instant claims.
Applicant has shown some differences in taste profile (different taste, same odor) and in solubility in glycerin (both soluble up to 1%, but only one soluble up to 3%). However, these differences are consistent with an expected, gradual variance in properties between members of a homologous series. See, e.g., In re Norris, 179 F.2d 970, 972 (CCPA 1950) (noting that “chemists understand that members of a homologous series of chemical compounds possess the same principal characteristics which vary gradually from member to member”); In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986) (affirming obviousness despite “some differences in degree between the properties of’ two isomers, noting that “a difference in structure, although slight, would have been expected to produce some difference in activity”).
Further, Applicant has not identified persuasive evidence in the record showing that these differences would have suggested to a person of ordinary skill in the art that substituting zingerone with 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone would have rendered Weidner’s compositions unsuitable for their intended use. Applicant has not argued that the additional methylene group, or the observed differences in taste or solubility in 3% glycerin, actually alter this activity. Indeed, the additional methylene group did not alter the shared pleasant aromatic odors or solubility in 0.5% and 1% glycerin.
With regard to the argument that the 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone is only very sparingly soluble in commonly used diluents, such as water and glycerol and that the present invention provides improved and unexpected results, the Examiner is not persuaded that the Applicant has demonstrated unexpected results. Unexpected results “must be shown to be unexpected compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). The data of the instant specification show only the solubility of 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone in the disclosed solvents; there is no data comparing the solubility of 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone to that of zingerone. With regard to the Declaration filed in application 14/007,520 and attached as Exhibit B, the Declaration does compare the solubility of ethyl gingerone to zingerone, but the provided data lacks a nexus to the claimed subject matter. See, e.g., In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995) (“For objective evidence to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.”). The tested solvent is glycerin alone, but none of the appealed claims recite glycerin alone as the solvent. Moreover, the Declaration does not demonstrate that 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone is markedly superior; if anything, 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone’s more limited solubility in 3% glycerin compared to zingerone is a drawback, rather than an unexpected result. See, e.g., In re Papesch, 315 F.2d at 392 (“A mere difference in degree is not the marked superiority which ordinarily will remove the unpatentability of adjacent homologues of old substances.”). Thus, the Declaration filed in application 14/007,520 and attached as Exhibit B does not demonstrate unexpected results.
With regard to Galal and the Declaration under 37 CFR 1.132 by Dr. Sylvie Cupferman filed in Application 16/894,258, the Declaration does not provide any teachings directed to which excipients can be used and which excipients cannot be used to formulate a composition comprising zingerone or any of its known homologs. Moreover, Galal teaches each substance was initially evaluated at 0.360 mg per 0.1 ml DMSO or ethanol, which is equivalent to 0.036% (see page 68, left, 3rd paragraph). In the Cupferman declaration, as noted in the response, the final concentrations of the (4-(3-ethoxy-4- hydroxyphenyl)-2-butanone) was 0.5% to 0.05% in dimethyl sulfoxide. Thus, the amounts used in the declaration were much higher than those used in Galal and cannot be directly compared.
Moreover, the Examiner notes that antimicrobial activity of ethylzingerone was tested against Burkholderia multivorans, Candida albicans (ATCC 10231), and Aspergillus brasiliensis in the Declaration and compared to the activity of zingerone disclosed in the Galal reference. Neither Burkholderia multivorans nor Aspergillus brasiliensis were tested in the Galal reference. While the Galal reference did test Candida albicans, the Candida albicans in Galal is a different strain than that utilized in the declaration. Galal teaches Candida albicans 3153 was utilized (page 68, left, 2nd paragraph), while the strain utilized in the declaration was Candida albicans (ATCC 10231). Thus, the Examiner is unable to ascertain from the data presented that ethylzingerone indeed possesses unexpected properties compared to zingerone, since the compounds were tested against different microbials. The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992). In the instant case, since the compounds were not tested against the same microbial agents, the evidence does not establish that the results are in fact unexpected and unobvious. Thus, arguments regarding the Declaration under 37 CFR 1.132 by Dr. Sylvie Cupferman (initially filed in Application 16/894,258, now US Patent 11,169,437) have not been found persuasive.
Moreover, in the Decision on Appeal of the instant application dated May 22, 2025, the Board concluded that they were not persuaded that Appellant had demonstrated unexpected results. As stated in the 1777 Appeal, although the data in the Specification (Spec. 8-9) demonstrates that the claimed compound possesses different solubilities in different solvents, it is not unexpected that different solvents result in different properties. “[A]ny superior property must be unexpected to be considered as evidence of nonobviousness,” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007), and here the record lacks persuasive evidence that ordinarily skilled artisans would have found these different solubilities unexpected.
Applicant argues:
Concerning the question of commensurate in scope with the claims, the MPEP explains that when considering whether proffered evidence is commensurate in scope with the claimed invention, "[o]ffice personnel should not require the applicant to show unexpected results over the entire range of properties possessed by a chemical compound or composition."
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
The Examiner does not argue that Applicant must show unexpected results for every possible embodiment within the scope of the claims. However, The MPEP does require that unexpected results be commensurate in scope with the claimed invention. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). In the instant case, the claims require an organic solvent with solubility parameters in the Hansen solubility space such that that 4.5< δa<7 and 14< δd<22. Glycerin is not within the scope of the claimed organic solvent and thus solubility data of 4-(3-ethoxy-4- hydroxyphenyl)-2-butanone in glycerin is not commensurate in scope with the claims.
Applicant argues:
it is improper to reconstruct claims in a piecemeal fashion by picking and choosing from the prior art using applicants' disclosure as a blueprint. In fact, the rejection of the claims seems to be predicated on improper hindsight. It is impermissible under 35 U.S.C. 103 to use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention. Furthermore, it is well settled that hindsight reconstruction as done in the present case using the patent application as a guide through the maze of prior art references, combining "the right references in the right way" so as to achieve the result of the claimed invention must be avoided. The rejection of the claims is in the nature of "ought to be tried" which is an impermissible standard under 35 U.S.C. 103.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
MPEP 2145. X. A. states, "Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, “[a]ny judgement on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Applicants may also argue that the combination of two or more references is “hindsight” because “express” motivation to combine the references is lacking. However, there is no requirement that an “express, written motivation to combine must appear in prior art references before a finding of obviousness.” See Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004). See MPEP § 2141 and § 2143 for guidance regarding establishment of a prima facie case of obviousness.”
In the instant case, the obviousness rejection is based on the combined teachings of Weidner and Berlin. As set forth above, Weidner teaches a cosmetic composition comprising zingerone and a cosmetically acceptable vehicle, including isopropyl myristate. As set forth above, Berlin establishes that the instantly claimed compound is a known homologue of zingerone. As set forth above, before the effective filing date of the invention, it would have been prima facie obvious for a person of ordinary skill in the art to utilize solvents taught as useful for a composition comprising Zingerone including isopropyl myristate as taught by Weidner for a composition comprising the homologue Compound (I) taught by Berlin, resulting in a composition comprising Compound A and isopropyl myristate with an expectation of success, since the compounds which are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
Therefore, the instant obviousness rejection is based on teachings known in the art at the time of the instant invention and not solely on the Applicant's disclosure.
Applicant argues:
The cited art lacks the necessary direction or incentive to those of ordinary skill
in the art to render a rejection under 35 USC 103 sustainable. The cited art fails to provide the
degree of predictability of success of achieving the properties attainable by the present invention (e.g., enhanced dissolution of 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone) needed to sustain a rejection under 35 USC 103.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
Obviousness does not require absolute predictability, only a reasonable expectation of success, i.e., a reasonable expectation of obtaining similar properties. See, e.g., In re O’Farrell, 853 F.2d 894, 903, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988). In the instant case, as set forth above, it would have been prima facie obvious for a person of ordinary skill in the art to utilize solvents taught as useful for a composition comprising Zingerone including isopropyl myristate as taught by Weidner for a composition comprising the homologue Compound (I) taught by Berlin, resulting in a composition comprising Compound A and isopropyl myristate with an expectation of success. Moreover, the Examiner notes that the instant claims do not require that 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone) is dissolved, only that the cosmetic composition comprise 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone) in a specific amount and an organic solvent having solubility parameter in the Hansen solubility space such that 4.5 < δa < 7 and 14 < δd < 22. The skilled artisan would have been imbued with at least a reasonable expectation of success of arriving at a composition comprising 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone) and isopropyl myristate in view of the teachings of the cited art, since compounds which are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
Applicant argues:
Zhang is concerned with therapeutic compositions (e.g., treating pain) as distinguished from non-therapeutic cosmetic compositions according to the present invention. Furthermore, Zhang does not disclose 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone and accordingly, is not concerned with solubility problem addressed by this invention. Also, Zhang is not even concerned with solubility problem of the numerous warming sensate agents mentioned therein. Accordingly, persons of ordinary skill in the art would not have been led or motivated to employ caprylic/capric acid triglyceride to address the problem of the present invention to solubilize 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone.
Examiner's response:
The above argument has been carefully considered and has not been found persuasive.
MPEP 2123 states:
"The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). In the instant case, Zhang suggests a composition comprising zingerone and teaches capric/caprylic acid as a suitable emollient. Moreover, as set forth above, Zhang teaches isopropyl myristate and caprylic/capric acid triglyceride are alternatively useful as an emollient in compositions comprising zingerone. As set forth above, it would have been prima facie obvious for a person of ordinary skill in the art to substitute isopropyl myristate with the emollient, caprylic/capric acid triglyceride with an expectation of success, since the prior art establishes isopropyl myristate and caprylic/capric acid triglyceride are alternatively useful as an emollient in compositions comprising zingerone and based on the fact that the prior art establishes that 4-(3-ethoxy-4-hydroxyphenyl)-2-butanone is a known homologue of zingerone and compounds which are homologs are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties.
Moreover, in the Decision on Appeal of the instant application dated May 22, 2025, the Board concluded that the above argument was unavailing and that the Examiner adequately establishes that a person of ordinary skill in the art would have been motivated to substitute Weidner’s isopropyl myristate with Zhang’s caprylic/capric acid triglyceride based on Zhang’s teaching that these compounds are alternatively useful as emollients. That Zhang identifies caprylic/capric acid triglyceride as an emollient instead of a solvent is not determinative. The mere fact that a prior art reference teaches a multitude of effective alternatives does not per se defeat a prima facie case of obviousness of a claim to one of those alternatives.
Conclusion
Claims 1-3, 5-8, 12-21, and 23-28 are rejected.
No claim is allowed.
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 RAYNA B RODRIGUEZ whose telephone number is (571)272-7088. The examiner can normally be reached 8am-5:00pm, Monday - Thursday.
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/Rayna Rodriguez/Primary Examiner, Art Unit 1628
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