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 .
DETAIL ACTION
This office action is a response to the following:
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As filed, claims 1-20 are pending.
Election/Restrictions
Regarding the election of species requirement, Applicant elected the species of 1,3-butylene glycol product comprising 1,3-butylene glycol and the total content of all 19 impurities depicted in claim 1, which can be found in paragraph 0017 of the instant specification. The claims, which read on the elected species, are instant claims 1-20, according to Applicant’s reply filed on 11/24/2025. However, the Examiner finds that only claims 1, 2, 5, and 6 read on the abovementioned elected species by having the total content of all 19 impurities depicted in claim 1. Accordingly, only claims 1, 2, 5, and 6 will be examined herein.
Claims 3, 4, and 7-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Examination will begin with the elected species. In accordance with the MPEP 803.02, if upon examination of the elected species, no prior art is found that would anticipate or render obvious the instant invention based on the elected species, the search of the Markush-type claim will be extended. If prior art is then found that anticipates or renders obvious the non-elected species, the Markush-type claim will be rejected. It should be noted that the prior art search will not be extended unnecessarily to cover all non-elected species. Should Applicant overcome the rejection by amending the claim, the amended claim will be reexamined. Id. The prior art search will be extended to the extent necessary to determine patentability of the Markush-type claim. Id. In the event prior art is found during reexamination that renders obvious or anticipates the amended Markush-type claim, the claim will be rejected and the action made final. Id.
As per MPEP 803.02, the Examiner will attempt to determine whether the entire scope of the claims is patentable. Applicants' elected species, as shown above, does not make a contribution over the prior art.
According to MPEP 803.02: should the elected species appear non-allowable, the search of the Markush-type claim will not be extended. The Markush-type claim shall be rejected and claims to the nonelected invention held withdrawn from further consideration.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/12/2022; 4/1/2024; 10/15/2024; and 9/10/2025 has been considered by the Examiner.
The information disclosure statement (IDS) submitted on 9/18/2025 was not considered by the Examiner because it is a duplicate of the IDS filed 9/10/2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
With regards to the intended use statement, such as “moisturizer”, in claim 5 and “cosmetic” in claim 6, they have not been accorded patentable weight for prior art purpose because such statements failed to limit the components of the composition depicted in claim 1.
The Examiner finds that any prior art composition having the same components as the instantly claimed product would be capable of performing the intended use, according to the guidance in MPEP 2111.02(II). Therefore, the Examiner finds that “moisturizer” in claim 5 and “cosmetic product” in claim 6 are synonymous as composition for prior art purpose.
Claim Rejections - 35 USC § 103
The following is a quotation of 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 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.
Claims 1, 2, 5, and 6 are rejected under 35 U.S.C. 103 as being obvious over U.S. Patent No. 6,900,360, hereinafter Tsuji. See IDS filed 8/12/2022.
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Regarding claims 1, 5, and 6:
Determining the scope and contents of the prior art:
Tsuji, for instance, teaches the following high-purity 1,3-butylene glycol product, which can be used as raw material for cosmetic.
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(abstract)
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(column 9, lines 34-47)
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(column 1, lines 30-35)
Ascertaining of the difference between the prior art and the claim at issue:
In the abovementioned high-purity 1,3-butylene glycol product, Tsuji, for instance, did not explicitly teaches the content of the 19 impurities depicted in claim 1, and the sum of the impurity content to be less than 65 ppm.
Finding of prima facie obviousness --- rationale and motivation:
The Examiner finds that the purification of the abovementioned 1,3-butylene product of Tsuji to a have a 100% pure product and 0% impurity/byproduct would have been prima facie obvious to the skilled artisan, motivated by the desire to eliminate impurities or byproducts in the compound that would be reasonably expected to adversely affect its overall biological activity, function or stability. As directed by the MPEP at §2144.04(VII), “Pure materials are novel vis-à-vis less pure or impure materials because there is a difference between pure and impure materials. Therefore, the issue is whether claims to a pure material are unobvious over the prior art. In re Bergstrom, 427 F.2d 1394, 166 USPQ 256 (CCPA 1970). The mere purity of a product, by itself, does not render the product unobvious. Ex parte Gray, 10 USPQ2d 1922 (Bd. Pat. App. & Inter. 1989). Factors to be considered in determining whether a purified form of an old product is obvious over the prior art include whether the claimed chemical compound or composition has the same utility as closely related materials in the prior art, and whether the prior art suggests the particular form or structure of the claimed material or suitable methods of obtaining that form or structure. In re Cofer, 354 F.2d 644, 148 USPQ 268 (CCPA 1966)" (emphasis added)
In addition, the Examiner finds the further purification (i.e. reduction of any impurity to be less than 65 ppm or to be 0%) of the already highly-purified 1,3-butylene glycol product of Tsuji would have been obvious for a person of ordinary skill in the art via routine optimization.
Lastly, the Examiner finds the purification apparatus used by Tsuji appeared to be identical as the appartus used for purify the instantly claimed 1,3-butylene glycol product (for comparison, see below). Therefore, there is a reasonable expectation of success that the abovementioned 1,3-butylene glycol product of Tsuji has the same purity profile as the instantly claimed 1,3-butylene glycol product (i.e. the sum of total content of all 19 impurities depicted in claim 1 to be less than 65 ppm or to be 0%).
For the reasons stated above, the claims are prima facie obvious.
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(Figure 1 of Tsuji)
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(column 7, lines 22-37 of Tsuji)
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(Fig. 1 of instant application)
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(pg. 30, lines 10-21 of the instant specification)
Regarding claim 2:
Determining the scope and contents of the prior art:
Tsuji, for instance teaches the abovementioned purified 1,3-butylene glycol product having 0% impurity/byproduct or abovementioned purified 1,3-butylene glycol product having impurities less than 65 ppm..
Ascertaining of the difference between the prior art and the claim at issue:
Tsuji, for instance, did not explicitly teaches the abovementioned purified 1,3-butylene glycol product to have an impurity profile of less than 70 ppm after the 1,3-butylene glycol product has been kept at 180oC for 3 hours in air atmosphere.
Finding of prima facie obviousness --- rationale and motivation:
The Examiner finds that it would have been obvious for a person of ordinary skill in the art to recognize the abovementioned 1,3-butylene glycol product of Tsuji would have the same degradation profile, as shown above, as the instantly claimed 1,3-butyene glycol product when the purification process of Tsuji appeared to be identical as the instantly claimed 1,3-butylene glycol product, which is further supported by Tsuji stating its highly purified 1,3-butylene glycol product undergoes a minimal change in quality with passage of time (as shown below).
Therefore, the claim is prima facie obvious.
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(column 9, lines 44-47)
Conclusion
Claims 1, 2, 5, and 6 are rejected.
Claims 3, 4, and 7-20 are withdrawn.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 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, Clinton Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621