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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on June 3, 2026 has been entered.
Status of Claims
Claims 1-3, 5, 7-8, 10-14 and 16-18 are pending. Claims 4, 6, 9 and 15 are canceled. Claims 1, 13-14 and 17-18 are amended.
Claims 1-3, 5, 7-8, 10-14 and 16-18 are examined on their merits to the extent of the elected species, Laurone (12-tricosanone) for K1, 14-nonacosanone for K2 and Stearone, (18-pentatriacontanone) for K3.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Objections/Rejections Withdrawn
Claim Objections
In light of the amendments to the claims the objection to claims 13 and 14 as being in improper form because a multiple dependent claim should refer to other claims in the alternative only is withdrawn.
Claim Rejections - 35 USC § 112(a)
In light of the amendments to the claims the rejection of claims 17 and 18 under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement is withdrawn.
Claim Rejections - 35 USC §112(b)
In light of the amendments to the claims the rejection of claim 18 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn.
Claim Rejections - 35 USC § 103
In light of the amendments to the claims the rejection of claims 1-3, 5, 7-8, 11-14 and 17-18 under 35 U.S.C. 103 as being unpatentable over JP 2003/113035 (4/18/2003)(6/17/2022 IDS)(“JP”) in view of Back et al. WO 2018/033607 (2/22/2018)(6/17/2022 IDS) as evidenced by the instant specification, https://webbook.nist.gov/cgi/cbook.cgi?ID=C540090&Mask=200 and https://pubchem.ncbi.nlm.nih.gov/compound/18-Pentatriacontanone is withdrawn.
New Rejections
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries 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 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5, 7-8, and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2003/113035 (4/18/2003)(6/17/2022 IDS)(“JP”) in view of Back et al. WO 2018/033607 (2/22/2018)(6/17/2022 IDS) and de Jong US 2014/0283879 (5/23/2014) as evidenced by the instant specification, https://webbook.nist.gov/cgi/cbook.cgi?ID=C540090&Mask=200, https://pubchem.ncbi.nlm.nih.gov/compound/18-Pentatriacontanone and 15-Nonacosanone | C29H58O | CID 75997 - PubChem.
(All citations are to the English translation mailed 5/28/2025 of JP 2003/113035). JP teaches a stick-like cosmetic that has the ability to retain its shape and has good applicability and adhesivity to the skin or lip and exhibits high stability over time which comprises a solid dialkyl ketone or a mixture of solid dialkyl ketones. (See Abstract on page 1 of the English translation). JP teaches that suitable dialkyl ketones include diheptadecyl ketone, diundecyl ketone and heptadecyl undecyl ketone. (See Examples 1-6 and 8-9 on pages 7 and 9).
Diundecyl ketone is also referred to as laurone or 12-tricosanone, as evidenced by https://webbook.nist.gov/cgi/cbook.cgi?ID=C540090&Mask=200. Laurone is the elected species of K1. Laurone is a dialiphatic ketone comprising 23 carbons as evidenced by the instant specification at [0059]. 23 carbon atoms falls within the from 15 to 25 carbon atoms called for in claim 1, falls within the 5 to 24 carbon atoms called for in claim 2, and falls within the from 21 to 25 carbon atoms called for in claim 3.
Diheptadecyl ketone is also referred to as stearone or 18-pentatriacontanone, as evidenced by https://pubchem.ncbi.nlm.nih.gov/compound/18-Pentatriacontanone. Stearone is the elected species of K3. Stearone is a dialiphatic ketone comprising 35 carbons as evidenced by the instant specification at [0059]. 35 carbon atoms falls within the from 26 to 32 carbon atoms called for in claim 1, falls within the 5 to 24 carbon atoms called for in claim 2, and also falls within the from 33 to 37 carbon atoms called for in claim 5.
JP teaches cosmetic composition comprising stearone K3 (referred to by its alternate name of diheptadecyl ketone) (see examples 1-6 and 9) and a combination of stearone (referred to by its alternate name of diheptadecyl ketone) (K3) and laurone (referred to by its alternate name of diundecyl ketone)(K1). (See Example 8 on page 9).
JP also discloses a combination of laurone K1 and heptadecyl undecyl ketone. (See Ex. 7 on page 8). JP teaches that the presence of dialkyl ketones can provide a solid cosmetic composition with excellent adhesion and shape-retaining ability, usability on skin and lips and stability over time. (See [0001] on page 2). JP thus teaches the suitability of stearone and laurone and heptadecyl undecyl ketone in its mixtures. JP teaches that the content of the dialkyl ketone used in the present invention is 0.1 to 80% in all components. (See [0005] on page 3). JP thus teaches a composition as called for in instant claim 14.
0.1% to 80% overlaps with the 25 to 73% called for in claim 1 and overlaps with the 2 to 40 wt% called for in claim 1 and overlaps with the from 25 to 90% called for in claim 1. 0.1% to 80% overlaps with the at least 5 wt% called for in claim 6. 0.1% to 80% overlaps with the at least 3.5 wt% called for in claim 7. 0.1% to 80% overlaps with the at least 40 wt% called for in claim 8. 0.1% to 80% overlaps with from 1 to 40% called for in claim 14.
JP teaches that the cosmetic preferably contains an oily component in order to improve shape retention. JP teaches that such oily component can be waxes as called for in instant claim 13. (See [0006] on pages 3-4).
JP does not teach dialkyl ketones synthesized by the decarboxylative ketonization of fatty acids. JP does not teach nonacosanone. These deficiencies are provided in the teachings of Back et al. and de Jong et al.
Back et al. (Back) teaches the synthesis of a mixture of dialiphatic ketones comprising ketones with the range of C15-C35 by decarboxylative ketonization of fatty acids. (See Examples 1 and 2). Back teaches that decarboxylative ketonization of a fatty acid is an effective way to make dialiphatic ketones. The method is a decarboxylative ketonization reaction of a fatty acid in a liquid phase with a metal compound as a catalyst. (See [0005-0006]). Back teaches that the decarboxylative ketonization of fatty acids into ketones is well known and offers the advantages of yielding the desired ketones in high yield with only minor amounts of undesired by-products obtained which can be easily separated from the reaction mixture. (See [0486]). The dialiphatic ketones being obtained by decarboxylation ketonization of a fatty acid in a liquid with a metal compound catalyst as called for in instant claim 11.
The final composition comprises 69% C15-C25 ketones K1, 28.1% C27-C31 ketones K2 and 2.5% C33-C35 ketones K3. Back teaches that emulsions are useful in cosmetics. (See page 1, lines 26-30).
De Jong et al. (Jong) is a hot melt cleaning composition that is used for cleaning. (See Abstract). The hot melt cleaning composition comprises a hot melt vehicle composition and a gelling agent. (See Jong [0019]). The hot melt vehicle can be a wax. (See [0013-0014]). Jong teaches that suitable gelling agents include stearone, laurone and 15-nonacosanone and mixtures thereof. (See [0019] and Jong claim 2).
15-nonacosanone is a dialiphatic ketone comprising 29 carbons as evidenced by 15-Nonacosanone | C29H58O | CID 75997 - PubChem. 29 carbon atoms falls within the from 26 to 32 carbon atoms called for in claim 1. 15-nonacosanone has 29 carbons and corresponds to the formula in instant claim 1 in which the R2 radicals have 14 carbon atoms which falls within the linear C11-C16 alkyl called for in instant claim 1. R2’ in which the R2’ radicals have 14 carbon atoms which falls within the linear C11-C16 alkyl called for in instant claim 1.
14-nonacosanone is the elected species of K2. 14-nonacosanone would be obvious in view of the disclosure of 15-nonacosanone because they are close (next position over) positional isomers that share virtually identical structures and are expected to have similar chemical properties. See MPEP Sec. 2144.09; Position isomers are close enough in structure to warrant an expectation of similar properties; In re Wilder 563 F.2d 457, 195 USPQ 426 (CCPA 1977).
It would have been prima facie obvious before the effective filing date of the claimed invention for one of ordinary skill in the art making the JP cosmetic composition comprising a combination of 0.1 to 80 wt% stearone K3, 0.1 to 80 wt% Laurone K1, and a wax to use 0.1 to 80 wt% 15-nonacosanone as taught by Jong in order to have a gelling agent mixture that is suitable for a wax as taught by Jong.
It would have been prima facie obvious before the effective filing date of the claimed invention for one of ordinary skill in the art making the JP cosmetic composition comprising a combination of 0.1 to 80 wt% stearone K3, 0.1 to 80 wt% Laurone K1, a wax and 0.1 to 80 wt% 15-nonacosanone to have each of the dialiphatic ketones be made by decarboxylative ketonization of a corresponding fatty acid in a liquid with a metal catalyst as taught by Back in light of Back’s teaching that the decarboxylative ketonization of fatty acids into ketones is well known and offers the advantages of yielding the desired ketones in high yield with only minor amounts of undesired by-products obtained which can be easily separated from the reaction mixture.
There would be a reasonable expectation of success because Back teaches that its compositions and methods are useful in cosmetics and JP teaches the suitability of stearone, laurone and other dialiphatic ketones in its mixtures. There would also be a reasonable expectation of success because Back teaches the decarboxylative ketonization of fatty acids into ketones is well known and offers the advantages of yielding the desired ketones in high yield with only minor amounts of easily removed undesired by-products. There would also be a reasonable expectation of success because Jong teaches the suitability of stearone, laurone and 15-nonacosanone and other dialiphatic ketones in its mixtures and teaches their ability to act as gelling agents in compositions.
Allowable Subject Matter
Claims 10 and 16-18 are free of the prior art. The prior art does not teach or suggest a cosmetic composition or mixture that consists of only ketones K1, K2 and K3 or that consists of only ketones K1, K2 and K3 and the additional components.
Claims 16-18 are allowable. Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
The comments filed May 4, 2026 have been considered and are found to be partly persuasive and partly unpersuasive.
Applicants note the amendments to the claims and where in the originally filed claims or specification support can be found for the amendments to the claims.
Applicants note the amendments to the claims and assert that the 35 USC Sec. 112(a) rejection of claims 17 and 18 has been overcome by the amendments to the claims. The Examiner agrees and the rejection is withdrawn above.
Applicants note the amendments to the claims and assert that the 35 USC Sec. 112(b) rejection of claim 18 has been overcome by the amendments to the claims. The Examiner agrees and the rejection is withdrawn above.
Applicants argue that neither JP nor Back teaches or suggest mixtures including at least 25 wt% of K1, at least 2 wt% K2 and at least 25 wt% of K3 where the combination of K1, K2 and K3 produce unexpectedly stable cosmetic composition with desirable softening points. Regarding K2, JP only discloses dialiphatic ketones according to formula R-C(=O)R’ where R and R’ are either C10 or C17.
Applicants further assert that one of ordinary skill in the art would not be motivated to combine the teachings of JP and Back because Back is directed towards the decarboxylative ketonization of fatty acids, particularly to produce surfactants. Back does not teach any cosmetic compositions or indicate that the ketones produced would be safe to use in cosmetic compositions.
Applicants note that ketone mixtures and cosmetic composition that include the claimed ketones in the clamed amounts show superior long term stability and softening points compared to compositions that do not include ketones K1, K2 and K3, or compositions that contain too much or too little of ketones K1, K2 and K3. Superior long term stability is found in the claimed composition and significantly higher softening points, up to 26 degrees Celsius higher, than those compositions which comprise less than this amount of ketones K1, K2 and K3.
Applicants’ arguments have been reviewed and in light of the amendments to the claims are found to be sufficiently persuasive with respect to K2 as recited in amended claim 1 not being taught in JP and Back. The rejections are withdrawn above.
Applicants arguments that superior long term stability is found in the claimed composition and significantly higher softening points, up to 26 degrees Celsius higher, than those compositions which comprise less than this amount of ketones K1, K2 and K3 is found to be unpersuasive because this property does not need to be recognized in the prior art in order for a prima facie obviousness rejection to be valid.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result is covered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
Thus, as seen in the new rejection applied above it would have been prima facie obvious before the effective filing date of the claimed invention for one of ordinary skill in the art making the JP cosmetic composition comprising a combination of 0.1 to 80 wt% stearone K3, 0.1 to 80 wt% Laurone K1, and a wax to use 0.1 to 80 wt% 15-nonacosanone as taught by Jong in order to have a gelling agent mixture that is suitable for a wax as taught by Jong.
It would have been prima facie obvious before the effective filing date of the claimed invention for one of ordinary skill in the art making the JP cosmetic composition comprising a combination of 0.1 to 80 wt% stearone K3, 0.1 to 80 wt% Laurone K1, a wax and 0.1 to 80 wt% 15-nonacosanone to have each of the dialiphatic ketones be made by decarboxylative ketonization of a corresponding fatty acid in a liquid with a metal catalyst as taught by Back in light of Back’s teaching that the decarboxylative ketonization of fatty acids into ketones is well known and offers the advantages of yielding the desired ketones in high yield with only minor amounts of undesired by-products obtained which can be easily separated from the reaction mixture.
There would be a reasonable expectation of success because Back teaches that its compositions and methods are useful in cosmetics and JP teaches the suitability of stearone, laurone and other dialiphatic ketones in its mixtures. There would also be a reasonable expectation of success because Back teaches the decarboxylative ketonization of fatty acids into ketones is well known and offers the advantages of yielding the desired ketones in high yield with only minor amounts of easily removed undesired by-products. There would also be a reasonable expectation of success because Jong teaches the suitability of stearone, laurone and 15-nonacosanone and other dialiphatic ketones in its mixtures and teaches their ability to act as gelling agents in compositions that contain wax.
Applicants argument that Back does is directed towards the decarboxylative ketonization of fatty acids and does not teach any cosmetic compositions or indicate that the ketones produced would be safe to use in cosmetic compositions is not found to be persuasive because this is not necessary. However, Back does teach that emulsions are useful in cosmetics. (See page 1, lines 26-30). Furthermore, JP contains the teaching that ketones are useful and safe to use in cosmetics. Back teaches the method of making an important component of a cosmetic composition that is taught to be useful and effective in JP’s cosmetic composition and JP is the primary reference in the obviousness rejection. Therefore, one of ordinary skill in the art would naturally go to the teachings of Back in trying to make the composition of JP and its components.
The remainder of Applicants’ arguments are moot in view of the new rejections applied above.
Conclusion
Claims 16-18 are allowed. Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 1-3, 5, 7-8 and 11-14 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
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SARAH CHICKOS
Examiner
Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
Prosecution Insights