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 .
Status of Claims
Receipt of Applicant’s response, dated 09/24/2025, is acknowledged.
Claims 1-15 are pending.
Claims 1 and 4-8 are amended.
Claims 9-15 remain withdrawn from consideration as being drawn to a nonelected invention.
Claims 1-8 are under consideration in the instant Office action to the extent of the elected species, i.e., the carbohydrate base is starch, the one or more anionic moieties is carboxylate, the polyvalent cation is calcium, and the personal care, food, or industrial composition is a cosmetic and sunscreen.
OBJECTIONS/REJECTIONS WITHDRAWN
Claim Objections
The objections to claims 5 and 8 set forth in the Office action dated 04/07/2025 are hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112
The indefiniteness rejections of claims 4 and 6-7 set forth in the office action dated 04/07/2025 are hereby withdrawn in light of Applicant’s amendments to the claims.
REJECTIONS MAINTAINED
Claim Rejections - 35 USC § 102
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.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chanty et al (DE 102017212626 A1, published 01/24/2019, cited in Notice of References Cited dated 04/07/2025).
Note: The instant claims are being examined to the extent of the elected species, i.e., the carbohydrate base is starch, the one or more anionic moieties is carboxylate, the polyvalent cation is calcium, and the personal care, food, or industrial composition is a cosmetic and sunscreen.
Note: Instant claim 1 is a product-by-process claim and therefore the product is given patentable weight, not the process by which the product is made. “[Elven 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 Thorne, 777 F.2d 695, 698, 227 USPQ S64, 966 (Fed. Cir. 1985).
Chanty et al teach cosmetic or dermatological compositions, as water-in-oil emulsions, containing A) cetyl diglyceryl tris-(trimethylsiloxy) silylethyldimethicone as emulsifier, B) an oil phase, C) an aqueous phase characterized by a content of one or more particulate and/or non-water swellable starches and/or starch derivatives (e.g., Abstract, Par. 6 on Page 5 of English translation). Advantageous starches or starch derivatives include calcium starch octenyl succinate (e.g., Par. 1 on Page 3 of English translation).
As noted supra, instant claim 1 is being examined to the extent of the product, rather than the process by which the product is made, and to the extent of the elected species and, therefore, is being examined to the extent of a modified carbohydrate being calcium starch octenyl succinate. These teachings of Chanty et al read on a modified carbohydrate being calcium starch octenyl succinate of instant claims 1-4 and 6.
Chanty et al teach that the cosmetic or dermatological compositions are free-flowing and can be formulated as a sunscreen (e.g., Par. 5 on Page 3 and Par. 6-7 on Page 5 of English translation).
These teachings of Chanty et al read on the modified carbohydrate of instant claim 7 and read on the cosmetic and sunscreen composition comprising the modified carbohydrate of instant claim 8.
Regarding instant claim 5, the calcium starch octenyl succinate of Chanty et al has the same structure as the calcium starch octenyl succinate of the instant claims and, thus, the properties of the calcium starch octenyl succinate must necessarily be the same. 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). Therefore, the teachings of Chanty et al also read on the angle of repose of the modified carbohydrate being between about 20 to about 35 of instant claim 5.
NEW GROUNDS OF REJECTION
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 recites the limitation “the one or more anionic moieties is carboxylate”. Claim 2, which depends on claim 1, recites the limitation “the one or more anionic moieties is selected from the group consisting of carboxylate, sulfonate, phosphate, and mixtures thereof”. Because claim 2 broadens the scope of the one or more anionic moieties from claim 1, claim 2 is rejected under 35 USC 112(d) both for failing to further limit the subject matter of claim 1 and for failing to include all of the limitations of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Response to Applicant’s Arguments
Applicant’s arguments filed on 09/24/2025 have been considered.
Applicant argues that with the amendment to base claim 1 to recite a modified carbohydrate “derivatized with one or more anionic moieties, the one or more anionic moieties is carboxylate”, instant claim 1 now recites a different anionic moiety than the calcium starch octenyl succinate taught by Chanty et al and now Chanty et al do not anticipate the amended claims.
The above argument has been fully considered by the Examiner but is not found persuasive because Chanty et al teach cosmetic or dermatological compositions, that are free-flowing and can be formulated as a sunscreen, comprising calcium starch octenyl succinate (See the maintained rejection under 35 USC 102 above). Calcium starch octenyl succinate is a carboxylate derivatized starch which meets the requirements of amended claim 1, and therefore the rejection of claims 1-8 under 35 USC 102 as being anticipated by Chanty et al is hereby maintained. In fact, the Examiner notes that based on the species election made in the response dated 03/11/2025, the one or more anionic moieties have been examined, and are being examined, to the extent of carboxylate in the Office action dated 04/07/2025 and in the instant Office action.
Conclusion
No claims are allowable.
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.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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