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 .
DETAILED ACTION
The Applicant’s reply filed on 10/10/25 is acknowledged. Claims 1-20 are pending. Claims 6-20 have been withdrawn. No claims have been amended. Claims 1-5 are under consideration.
Rejections Maintained and New Grounds of 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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Barba et al. (WO 2016/110544) in view of Peters et al. (US 2011/0172475; cited in IDS) and Bockrath (US 2015/0329878).
Barba et al. teach an assembly for packaging and applying a composition for making up and/or caring for keratin fibres, especially the eyelashes or the eyebrows (e.g. abstract).
Barba et al. teach a step of mixing a composition comprising isododecane, wax, and colorant (i.e. step (3)) (e.g. Example 1).
Barba et al. are silent as to the source of the isododecane. Barba et al. do not teach steps (1) or (2) of claim 1 of producing isobutene and preparing isododecane from the isobutene. This is made up for by the teachings of Peters et al.
Peters et al. teach isobutene, isoprene, and butadiene are obtained from mixtures of C4 and/or C5 olefins by dehydrogenation. The C4 and/or C5 olefins can be obtained by dehydration of C4 and C5 alcohols, for example, renewable C4 and C5 alcohols prepared from biomass by fermentation processes (e.g. abstract). Peters et al. teach that their integrated process for producing a mixture of renewable biofuels and/or biofuel precursors, as well as a variety of different renewable chemicals from renewable ethanol and renewable isobutanol which are advantageous over fossil fuels (e.g. paragraphs 0002-0015). Peters et al. teach a step of producing isobutene by a fermentation method (e.g. Examples 1 and 3). Peters teach a step of producing isododecane by oligomerization (i.e. step (2))(e.g. paragraph 0072, 0089, 0144; Examples, 11, 12 and 19).
While Peters et al. teach the step of fermentation, they do not teach the step (1) of claim 1 including the claimed intermediate substances. This is made up for by the teachings of Bockrath.
Bockrath a process for the fermentative production of a hydrocarbon, such as isobutene, using a microorganism cultured in a fermenter (e.g. paragraph 0001). Bockrath teaches that their process is advantageous in that it allows for an elimination or reduction of the risk of combustion of the fermentation off-gas which contains the desired gaseous hydrocarbon in combination with oxygen and is thus potentially inflammable. The process of the invention furthermore allows for an improved production efficiency and an improved yield of the desired hydrocarbon (in relation to the amount of oxygen fed into the fermenter), and the facilitation of the subsequent isolation of the hydrocarbon from the fermentation off-gas (e.g. paragraph 0003). Bockrath teach that in a particularly preferred embodiment, the desired hydrocarbon to be produced is isobutene and the enzymatic pathway for the production of isobutene by the microorganism involves the enzymatic conversion of acetone and acetyl-CoA into 3-hydroxy-3-methylbutyric acid (e.g. paragraph 0050).
Regarding Claim 1, it would have been obvious to one of ordinary skill in the art at the time of filing to select the methods of producing isododecane as taught by the combination of Peters and Bockrath for use with the method of Barba et al. While Barba is silent as to the source of the isododecane, Peters and Bockrath disclose the advantages of bio-based hydrocarbons and processes over fossil fuel and petroleum based hydrocarbons. One of ordinary skill in the art would have been motivated to obtain the disclosed benefits. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. “When a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have obvious to have selected the claimed process steps from within the prior art disclosures, to arrive compositions “yielding no more than one would expect from such an arrangement”.
Regarding Claims 2 and 5, Peters further teaches the inclusion of hydrogenation followed by distillation steps (e.g. paragraphs 0123-0125).
Regarding Claims 3 and 4, Peters teaches a reaction temperature of about 250-550 °F (i.e. about 121-287 °C) and a pressure of 0-1500 psig (i.e. about 0-103 bar), which overlap with the claimed ranges (e.g. paragraph 0077). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Response to Arguments
Applicant's arguments filed 10/10/25 have been fully considered but they are not persuasive.
Applicant argues that the claimed process unexpectedly allows the production of isododecane that can be used directly for formulating a cosmetic composition. Applicant argues that it is well known to those skilled in the art that fermentation processes generally give rise to the formation of sulfides, which may subsequently prevent the conversion of isobutene into cosmetic-grade isododecane (step 2 of the claimed process).
This is not found persuasive. Applicant has not provided data substantiating the unexpected results and the instant Specification does not discuss the formation or prevention of sulfides. In addition, Peters teaches purification the feedstock to remove sulfur-containing compounds including sulfides (e.g. paragraph 0078).
Applicant further argues that Peters does not teach step 1) of the claimed method or that the isobutene is derived from a fermentation method. Applicant further argues that Bockrath does not teach a method for producing renewable isododecane, step 3).
This is not found persuasive. As described supra, Peters et al. teach isobutene, isoprene, and butadiene are obtained from mixtures of C4 and/or C5 olefins by dehydrogenation. The C4 and/or C5 olefins can be obtained by dehydration of C4 and C5 alcohols, for example, renewable C4 and C5 alcohols prepared from biomass by fermentation processes (e.g. abstract). While Peters et al. teach the step of fermentation, they do not teach the step (1) of claim 1 including the claimed intermediate substances. This is made up for by the teachings of Bockrath. Bockrath teach a process for the fermentative production of a hydrocarbon, such as isobutene, using a microorganism cultured in a fermenter (e.g. paragraph 0001). Bockrath teach that in a particularly preferred embodiment, the desired hydrocarbon to be produced is isobutene and the enzymatic pathway for the production of isobutene by the microorganism involves the enzymatic conversion of acetone and acetyl-CoA into 3-hydroxy-3-methylbutyric acid (e.g. paragraph 0050). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, it would have been obvious to one of ordinary skill in the art at the time of filing to select the methods of producing isododecane as taught by the combination of Peters and Bockrath for use with the method of Barba et al. While Barba is silent as to the source of the isododecane, Peters and Bockrath disclose the advantages of bio-based hydrocarbons and processes over fossil fuel and petroleum based hydrocarbons. One of ordinary skill in the art would have been motivated to obtain the disclosed benefits. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
Accordingly, the rejection is maintained.
Conclusion
No claim is allowed.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619