DETAILED ACTION
Formal Matters
Claims 1-106 are cancelled. Claims 107-147 are new and pending. Claims 115,117-118,120-123,125-126,138-142,144-145 and 147 are withdrawn. Claims 107-114,116,119,124,127-137,143 and 146 are under examination.
Priority
The instant application is a continuation of PCT/IB2020/001058 filed on 12/15/2020, which claims priority from US provisional application 62/948,982 filed on 12/17/2019.
Objections and Rejections Withdrawn
The objections over claim 107 are withdrawn per applicant’s corrections to the claim.
The objections over claim 108 are withdrawn per applicant’s corrections to the claim.
The objection over claims 109-110 are withdrawn per applicant’s corrections to the claims.
The objections over claim 124 are withdrawn per applicant’s corrections to the claim.
The objection over claim 127 are withdrawn per applicant’s corrections to the claim.
The objection over claim 128 is withdrawn per applicant’s corrections to the claim.
The objection over claim 131 is withdrawn per applicant’s corrections to the claim.
The objection over claim 143 is withdrawn per applicant’s corrections to the claims.
The rejection under USC 112(b) over claims 107-114,116,119,124,127-137,143 and 146 is withdrawn per applicant’s amendment to have m=1 to 20 in claim 107 and arguments on how the limitations provide structural similarities which would create compounds that are not for functional use in hair care. Now it is noted that although the genus is broad, the compounds share structural elements (also noted in examples) that will link them.
The rejection under USC 112(b) over claims 107 and 108-114, 116, 119, and 124 for use of preferably is withdrawn per applicant’s amendment to remove this recitation.
The rejection under USC 112(b) over claim 116 is withdrawn per applicant’s amendments to provide how the element is derived.
The rejection under USC 112(b) over claim 119 is withdrawn per applicant’s amendment to the claim regarding how the groups differ and deletion of the portion that lacked antecedent basis.
The rejection under USC 112(b) over claim 124 is withdrawn per applicant’s amendment to the claim to correct the issue.
The rejection under USC 112(b) over claim 132 is withdrawn per applicant’s amendment to change the dependency for proper antecedent basis.
The rejection under USC 112(b) over claims 136 and 137 is withdrawn per applicant’s amendment to define how the groups are derived.
As these rejections are withdrawn, applicant’s arguments toward these rejections are now moot.
Maintained Rejection
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 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 107-114,116,119,124,127-137,143 and 146 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Benson US20180125767A1, Blin EP1457193A1 and Baydar US 4857310.
Benson teaches “ Cosmetic compositions comprising water, at least one estolide ester compound of Formula (3) wherein n is from 1 to 10, preferably from 2 to 8, and R is selected from branched or linear C3-20-alkyl, and B) optionally at least one surfactant component B, C) optionally at least one thickener component C, D) optionally at least one hair conditioning component D, and E) optionally at least one further component E, different to A to D, can be used for improved hair treatment.” (abstract). Benson teaches a general structure for the estolide ester of
PNG
media_image1.png
205
532
media_image1.png
Greyscale
(abstract and claim 1 of Benson). Examples 1-6 provide making of different compounds of this structure. Benson teaches n is from 1 to 10, and R is selected from the group consisting of branched or linear C3-20-alkyl. Benson teaches estolides are long-chain esters of the same or different (hydroxy) fatty acids or unsaturated fatty acids, made by acid-catalyzed addition. Estolide esters may be formed by esterification of an estolide with an alcohol, or directly by adding alcohols during the synthesis of estolides (paragraph 12). Benson teaches the esters may be an estolide ester of ricinoleic acid (example 2 and example 3 and paragraph 1). Benson teaches mixture of with an average molecular weight of hexamers due to oligomerization (paragraph 35). Benson teaches application onto hair for excellent cosmetic performance (paragraph 31) and eco-friendly use for shampoos and conditioners (paragraph 43).
Benson does not teach the elected compound of applicant or one that would meet all the limitations of claims 107 or 127.
Blin teaches “a cosmetic care or make-up composition containing a) at least one polyester resulting from the esterification of at least one triglyceride of carboxylic acid (s) hydroxylated (s) with a monocarboxylic acid aliphatic and with an aliphatic dicarboxylic acid, and b) at least one pasty compound. This composition makes it possible to obtain a deposit on the slippery, shiny, comfortable, clean contoured keratin materials, which does not migrate, whose color intensity is improved and / or whose color resistance after proofs is improved” (abstract). Blin teaches
PNG
media_image2.png
287
727
media_image2.png
Greyscale
pages 14-15 and paragraphs 27-29). R is a chain of 5 to 33 carbon atoms. Blin teaches ricinoleic acid as the preferred triglyceride that is found in natural castor oil (English translation of claims and disclosure). Blin teaches triglyceride being esterified with aliphatic monocarboxylic acid molecules (English translation, hydroxy hydroxylated aliphatic acid (triglyceride) polyester section). Benson teaches “Preferably, the hydroxylated carboxylic acid (s) are chosen from: 12-hydroxy stearic acid; α-hydroxy octadecanoic acid; 14-eicosenoic hydroxy acid, leucinic acid or 2-ethyl 3-hydroxy caprylic acid; ricinoleic acid; 3-hydroxy 4-hexanoic acid or oxynervonic acid; 16-hydroxy 6-hexadecenoic acid; 9,10-dihydroxy octadecanoic acid, 9,12-dihydroxy octadecanoic acid, aleuritic acid, 9,10,12-trihydroxy octadecanoic acid, hexahydroxy octadecanoic acid or octahydroxy octadecanoic acid (English translation). Thus, the fatty acid groups do not all have to be ricinoleic acid in an estolide ester compound. Blin teaches aliphatic dicarboxylic acids like succinic acid for the compounds.
Baydar teaches novel triglyceride compounds with the structure -
PNG
media_image3.png
230
401
media_image3.png
Greyscale
(abstract). Baydar’s compounds are good for skin moisturizing and hair conditioners (abstract), and thus, have cosmetic utility. Baydar teaches preferably carrying out the process with castor oil (example 1). Baydar also teaches esterification of hydroxyl groups (claim 4 of Baydar).
One of ordinary skill in the art before the time of filing was able to make estolide esters of different carboxylic acid compounds such as fatty acids (e.g. ricinoleic acid and others) and link them together by esterification or to other compounds to make useful compounds for cosmetic products through the combined teachings of the prior art that teach fatty acid ester compounds. The estolide esters are provided to be advantageous for performance and being eco-friendly in hair care products. Therefore, there was a reasonable expectation of success in obtaining ester compounds by combining known triglycerides, fatty acids, carboxylic acids and alcohols along with an esterification process and oligomerization into structures like those of Blin and Baydar similar of those of applicant’s claims and using them for cosmetic and hair care purposes by the teachings of the prior art due to advantages of having good cosmetic performance and being eco-friendly.
Response to Applicant’s Arguments to the Rejection under USC 103
Applicant argues that Baydar refers to cationic compounds, and thus, would not be applicable to applicant’s claims. There is no limitation in applicant’s claims that the compounds cannot be cationic or have to be nonionic and it appears that amine groups are allowed in the broad structural limitations of the applicant’s claims. As applicant’s claims are broad to structural features of the compound, prior art that teaches the portions and structures thereof is relevant particularly since each reference also recognizes use of its compounds for cosmetic formulations. Additionally, Baydar is used as a secondary reference for teachings of compound structure with esterified groups.
Applicant argues that Blin’s compounds do not have the estolide units. In the rejection under USC 103, it is the combination of the references that teaches the claims. The cited Benson references teaches use of estolide esters and that they are used for improved hair treatment. Thus, there is reason from Benson to add estolide groups into compounds for cosmetic hair treatments. The teachings of Blin are used for the structural attachments to make esters that are linked as in applicant’s claims as well as types of carboxylic acid and fatty groups that can vary in the compound.
Applicant argues that Benson teaches ricinoleic acid oligomers and a group that would only be one estolide moiety as opposed to two or more. In attaching estolide groups taught by Benson to glycerol units in the forms taught by Blin and Bayder, one of ordinary skill in the art would be capable of providing such compounds using this common type of linking.
Applicant argues that Benson teaches unidirectional compounds as compared to more bidirectional compounds that applicant is claiming. Again, the prior art provides for these types of bidirectional structures when combining the references, would allow carrying more of a beneficial fatty acid or derivative thereof like the estolides. Each of the reference recognizes the cosmetic utility of its compounds and the groups of its compounds for hair/keratin treatment. Additionally, note that MPEP section 2143 indicates “combining prior art elements according to known methods to yield predictable results” and “simple substitution of one known element for another to obtain predictable results” as rationales for obviousness. This was the context of examiner’s rejection. Further note that obviousness to try is a rationale when there are a finite number of identified, predictable solutions (in the cited prior art), with a reasonable expectation of success. The prior art recognizes making the structures via an esterification process (Blin and Bayder) for cosmetic use for treating hair/keratin as well as the recognition of estolide as a group that would be beneficial to cosmetic hair compositions as they have excellent properties (see paragraph 11 of Benson). Thus, there is a reasonable expectation of success in combining the references to produce compounds of applicant’s claims that will also have such beneficial hair properties enhanced by the use of estolides. Applicant has not provided evidence that enough varying compounds that would be covered by their claims would provide superior results in comparison to such structures considered relevant of the prior art. If applicant has such evidence, the claims may need to be put in commensurate in scope with the compounds the applicant has such evidence for. The data on page 233 only compares examples to the conditioner base that was the carrier.
For these reasons, the rejection over the combination of the references is maintained.
Maintained Rejection
Non-Statutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 107-114,116,119,124,127-137,143 and 146 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 42-46 and 49-66 of copending Application No. 17/786,081 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘081 provide for structures that have similar formula, components and compositions.
PNG
media_image4.png
246
591
media_image4.png
Greyscale
in claims of ‘081.
PNG
media_image5.png
115
450
media_image5.png
Greyscale
in applicant’s current claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 107-114,116,119,124,127-137,143 and 146 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 60, 62-67, 69-71, 74-89 of copending Application No. 17/840,922 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘922 provide for structures that have similar formula, components and compositions.
PNG
media_image6.png
88
527
media_image6.png
Greyscale
in claims of ‘922. in applicant’s current claims.
PNG
media_image7.png
144
563
media_image7.png
Greyscale
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Applicant’s Arguments
Applicant argues that it is premature to file terminal disclaimers at this time and does not argue these rejections at this time. Therefore, the rejections over non-statutory double patenting are maintained.
Conclusion
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 MARK V STEVENS whose telephone number is (571)270-7080. The examiner can normally be reached on M-F 9:00 am to 6:00 pm EST.
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, Brian-Yong Kwon can be reached on (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARK V STEVENS/
Examiner, Art Unit 1613