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 .
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 16-26 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.
Claim 16 recites the limitation "the solvent" in line. It is unclear if the solvent refers to the first solvent, the second solvent, or both first and second solvent, therefore claim 16 and dependent claims 17-26 are indefinite.
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.
Claim(s) 1-2, 4-11, 16-27 and 29-35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takeda et al. (US 2007/0269470).
Regarding claims 1-2, 4-11, 16-26 and 34: Takeda et al. (US ‘470) discloses an oil base having a three-dimensional network structure (gel) [abstract], wherein Example 1 [Ex. 1; 0080] prepares Oil Base 1 by reacting diglycerol, 12-hydroxystearic acid and hydrogenated dimer acid (C36 [0031]) at a mol ratio of 1.0:1.5:0.6 in toluene [Ex. 1; 0080]. Takeda et al. (US ‘470) discloses Example 23 [Ex. 23; 0102] produces a foundation (cosmetic material [0026, 0048]) by homo-mixing a composition comprising Oil Base 1 and squalene (hydrocarbon solvent) [Ex. 23; 0102; Table 18].
The claimed effects and physical properties, i.e. the elastomer gel has a particle size from about 15 µm to about 500 µm [instant claim 1], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Note: claims 6-9 further defines species of the polycarboxylic acid ester. However, as claimed, such species only further define the polycarboxylic acid ester; i.e. claims 1 and 6-9 do not require elastomer to comprise the polycarboxylic acid ester.
Note: claims 17-18 further defines species of the triglyceride solvent. However, as claimed, such species only further define the triglyceride solvent; i.e. claims 17-18 do not require solvent to comprise the triglyceride solvent.
Note: claims 19-20 further defines species of the mono-ester solvent. However, as claimed, such species only further define the mono-ester solvent; i.e. claims 19-20 do not require solvent to comprise the mono-ester solvent.
Note: claim 21 further defines species of the di-ester solvent. However, as claimed, such species only further define the di-ester solvent; i.e. claim 21 does not require solvent to comprise the di-ester solvent.
Note: claim 22 further defines species of the citrate ester solvent. However, as claimed, such species only further define the citrate ester solvent; i.e. claim 22 does not require solvent to comprise the citrate ester solvent.
Note: claims 23-24 further defines species of the ether solvent. However, as claimed, such species only further define the ether solvent; i.e. claims 23-24 do not require solvent to comprise the ether solvent.
Note: claim 25 further defines species of the carbonate solvent. However, as claimed, such species only further define the carbonate solvent; i.e. claim 25 does not require solvent to comprise the carbonate solvent.
Regarding claims 27 and 29-31: Takeda et al. (US ‘470) discloses Example 23 [Ex. 23; 0102] produces a foundation (cosmetic material [0026, 0048]) by homo-mixing a composition comprising Oil Base 1 and squalene (hydrocarbon solvent) [Ex. 23; 0102; Table 18].
Regarding claims 32-33: Takeda et al. (US ‘470) discloses Example 1 [Ex. 1; 0080] prepares Oil Base 1 by reacting diglycerol, 12-hydroxystearic acid and hydrogenated dimer acid (C36 [0031]) at a mol ratio of 1.0:1.5:0.6 in toluene [Ex. 1; 0080]. Takeda et al. (US ‘470) discloses Example 23 [Ex. 23; 0102] produces a foundation (cosmetic material [0026, 0048]) by homo-mixing a composition comprising Oil Base 1 and squalene (hydrocarbon solvent) [Ex. 23; 0102; Table 18].
Takeda et al. (US ‘470) discloses Oil Base 3 [Ex. 3; 0082] was prepared by reacting diglycerol, 12-hydroxystearic acid and hydrogenated dimer acid (C36 [0031]) at a mol ratio of 1.0:2.25:0.6 in toluene [Ex. 3; 0082]. Oil Base 3 was stirred with a composition comprising neopentyl glycol dicaprate (di-ester solvent) [Ex. 13; 0067, 0092; Table 8].
Regarding claim 35: Takeda et al. (US ‘470) discloses the basic claimed gel [as set forth above with respect to claim 1].
The claimed effects and physical properties, i.e. the elastomer gel has a viscosity from about 15,000 centipoise to about 1,000,000 centipoise [instant claim 35], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim(s) 1-2, 4-11, 14, 16-27, 29-31 and 35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cook et al. (US 6,469,129).
Regarding claims 1-2, 4-11 and 14: Cook et al. (US ‘129) discloses polyester gels [abstract], wherein Example 10 [Ex. 10; 19:60-20:12] prepares a polyester gel by reacting 1.76 equivalents palmitic acid, 8.51 equivalents glycerol and 14.36 equivalents adipic acid, and then adding 8.47 equivalents glycerol to afford the polyester gel {corresponding to 1:1.05 (-COOH):(-OH) ratio [Ex. 10; 19:60-20:12].
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
The claimed effects and physical properties, i.e. the elastomer gel has a particle size from about 15 µm to about 500 µm [instant claim 1], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Note: claims 6-9 further defines species of the polycarboxylic acid ester. However, as claimed, such species only further define the polycarboxylic acid ester; i.e. claims 1 and 6-9 do not require elastomer to comprise the polycarboxylic acid ester.
Regarding claims 16-26: Cook et al. (US ‘129) discloses a polyester gel by reacting palmitic acid, glycerol and adipic acid [Ex. 10; 19:60-20:12].
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
Regarding claim 27: Cook et al. (US ‘129) discloses polyester gels [abstract] for use as a chewing gum base [1:10-13].
Regarding claim 29: Cook et al. (US ‘129) discloses polyester gels [abstract; Ex. 10; 19:60-20:12].
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
Regarding claims 30-31: Cook et al. (US ‘129) discloses polyester gels [abstract; Ex. 10; 19:60-20:12].
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 [see MPEP 2111.02].
Regarding claim 35: Cook et al. (US ‘129) discloses the basic claimed gel [as set forth above with respect to claim 1].
The claimed effects and physical properties, i.e. the elastomer gel has a viscosity from about 15,000 centipoise to about 1,000,000 centipoise [instant claim 35], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cook et al. (US 6,469,129) as applied to claim 1 above.
Regarding claim 3: Cook et al. (US ‘129) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Cook et al. (US ‘129) discloses citric acid can be used in the reaction mixture [7:61-5:14].
Cook et al. (US ‘129) does not specifically disclose Ex. 10 containing citric acid. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included citric acid based on the invention of Cook et al. (US ‘129), and would have been motivated to do so since Cook et al. (US ‘129) suggests citric acid can be used in the reaction mixture [7:61-5:14]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cook et al. (US 6,469,129) as applied to claim 10 above.
Regarding claims 12-13: Cook et al. (US ‘129) discloses the basic claimed composition [as set forth above with respect to claim 10]; wherein Cook et al. (US ‘129) discloses 1,3-propanediol can be used in the reaction mixture [9:12-26].
Cook et al. (US ‘129) does not specifically disclose Ex. 10 containing 1,3-propanediol. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included 1,3-propanediol based on the invention of Cook et al. (US ‘129), and would have been motivated to do so since Cook et al. (US ‘129) suggests 1,3-propanediol can be used in the reaction mixture [9:12-26]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-33 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Takeda et al. (US 2007/0269470) was relied on for disclosing an oil base having a three-dimensional network structure [abstract]. The examiner maintains the position that a three-dimensional network corresponds to gel. Takeda et al. (US ‘470) discloses Example 23 [Ex. 23; 0102] produces a foundation (cosmetic material [0026, 0048]) by homo-mixing a composition comprising Oil Base 1 (Oil Base 1 prepared by reacting diglycerol, 12-hydroxystearic acid and hydrogenated dimer acid (C36 [0031]) at a mol ratio of 1.0:1.5:0.6 in toluene [Ex. 1; 0080]) and squalene (hydrocarbon solvent) [Ex. 23; 0102; Table 18].
As Takeda et al. (US ‘470) discloses a gel substantially identical to the claimed gel, the examiner maintains the position that the claimed effects and physical properties, i.e. the elastomer gel has a particle size from about 15 µm to about 500 µm [instant claim 1], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). [See MPEP 2112]. Evidence {data} would need to be provided showing the composition disclosed by Takeda et al. (US ‘470) does not necessarily or inherently possess the characteristics of the claimed product.
Cook et al. (US 6,469,129) was relied on for disclosing polyester gels [abstract], wherein Example 10 [Ex. 10; 19:60-20:12] prepares a polyester gel by reacting 1.76 equivalents palmitic acid, 8.51 equivalents glycerol and 14.36 equivalents adipic acid, and then adding 8.47 equivalents glycerol to afford the polyester gel {corresponding to 1:1.05 (-COOH):(-OH) ratio [Ex. 10; 19:60-20:12]. While Cook et al. (US ‘129) does not produce the gel in the presence of a first solvent, and further swelling the gel using a second solvent and subjecting to shear force, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) [see MPEP 2113].
As Cook et al. (US ‘129) discloses a gel comprising the reaction product of palmitic acid, glycerol and adipic acid, the examiner maintains the position that the claimed effects and physical properties, i.e. the elastomer gel has a particle size from about 15 µm to about 500 µm [instant claim 1], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). [See MPEP 2112]. Evidence {data} would need to be provided showing the composition disclosed by Cook et al. (US ‘129) does not necessarily or inherently possess the characteristics of the claimed product.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 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, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767