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 . Claims included in the prosecution are claims 1-3, 5-7, 10, 11, 13-15, 17-21, 23 and 25.
Applicants' arguments, filed 07/06/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
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, 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 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.
1. Claims 1-3, 7, 10, 11, 15, 17, 18, 20, 21, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Herve (US 2010/0009189, Jan. 14, 2010) in view of Canova et al. (US 2015/0147364, May 28, 2015) (hereinafter Canova), La Grande et al. (US 2004/0242788, Dec. 2, 2004) (hereinafter La Grande), and Gyobu et al. (JP 2001172411 A, Jun. 26, 2001) (hereinafter Gyobu).
Herve discloses a process for the preparation of a powder composed of particles based on a thermoplastic polymer (¶ [0001]). The particles obtained from the process are spherical particles (¶ [0136]). The process comprises a. forming a melt blend of a thermoplastic material P with at least one additive A and at least one compound B in order to obtain a dispersion of discrete particles of the thermoplastic material P dispersed in a continuous phase formed by the additive A and the compound B, b. cooling said blend to a temperature below the softening temperature of the thermoplastic material P, and c. treating said cold blend in order to bring about the separation of the discrete particles of thermoplastic material P (¶ [0011]-[0015]). Separation occurs instantaneously when the cooled blend is introduced into a liquid, such as water (¶ [0127]). The particles of polymer P are optionally isolated from the solvent/additive A/compound B solution. This can be carried out by any means which makes it possible to separate a liquid phase and a suspended solid phase (¶ [0131]). The particles of polymer P thus obtained can be washed and dried (¶ [0133]). Stage a) is preferably carried out in an extruder, more preferably in a twin-screw or multi-screw extruder (¶ [0119]). The temperatures of the various zones of the extruder are between 275 and 295°C (¶ [0152]). The process makes it possible to manufacture powders starting from any thermoplastic material (¶ [0032]). Suitable thermoplastic polymers include polyamides, polyesters, and polyolefins (¶ [0033]). The process can employ one or more additive A (¶ [0063]). Additive A is advantageously a polymer of the block type (¶ [0064]). The concentration of additive A in the blend ranges from 1% to 50% (claim 41). Examples of compound B include polysaccharides, polyoxyalkylene glycols, polyolefins, silicones, and waxes (i.e., claimed compound P) (¶ [0115]). The concentration of compound B in the blend ranges from 1% to 50% (claim 42). The concentration of thermoplastic polymer P may range from 63.5% to 88.25% (Table 1). The mean particle diameter desired is advantageously between 0.1 and 800 µm (¶ [0138]). The thermoplastic polymer can comprise various additives, such as fillers (¶ [0062]).
Herve differs from the instant claims insofar as not disclosing wherein the thermoplastic polymer comprises at least two fillers dispersed therein.
However, Canova discloses a cosmetic composition that includes particles of a polymeric composition that includes a polymer matrix and one or a plurality of mineral filler(s), uniformly dispersed in the polymer matrix, having properties of absorption and/or emission in the far infrared region ranging from 2 µm to 20 µm (abstract). The plurality of fillers may be a titanium dioxide, barium sulfate, and tourmaline combination (claim 27). The weight proportion of mineral filler(s) relative to the total weight of the polymeric composition is greater than equal to 1.0% and less than or equal to 50% (¶ [0040]-[0041]). The polymer matrix may be polyesters, polyolefins, or polyamides (claim 2). The application to skin of a dispersion of particles formed from said polymeric composition has the effect of reducing the signs of aging already present on the skin and of preventing or delaying the appearance of new signs (¶ [0011]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Herve discloses wherein the thermoplastic polymer may comprise fillers. Accordingly, it would have been obvious to one of ordinary skill in the art to have dispersed 1-50% titanium dioxide, barium sulfate, and tourmaline into the thermoplastic polymer of Herve since these are known and effective fillers that also provide an anti-aging effect to skin when dispersed in a thermoplastic polymer as taught by Canova.
The combined teachings of Herve and Canova do not disclose wherein agent C is an ethoxylated/propoxylated block copolymer.
However, La Grande discloses a process for preparing a thermoplastic polymer (abstract). The thermoplastic polymer comprises at least one polyalkylene oxide block, which can be introduced as an additive (¶ [0012]).
Gyobu discloses a thermoplastic polyester elastomer film. The elastomer contains copolymerized polyether glycol containing two or more types of alkylene units. The copolymerized polyether glycol of molecular weight 500-4000 comprises alkylene unit arranged randomly or in blocks. The copolymerized polyether glycol may be a block copolymerized polyether glycol containing propylene oxide (PO) and ethylene oxide (EO) at both terminals. The block copolymerized glycol contains PO/EO in a molar ratio of 90/10 – 30/70 (abstract).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have a block copolymerized glycol containing PO/EO in a molar ratio of 90/10-30/70 and having a molecular weight of 500-4000 as an additive A for the composition of Herve since a polyalkylene oxide block copolymer is a known and effective additive for thermoplastic polymer compositions as taught by La Grande and a block copolymerized glycol containing PO/EO in a molar ratio of 90/10-30/70 and having a molecular weight of 500-4000 is a known and effective polyalkylene oxide block copolymer as taught by Gyobu. One of ordinary skill in the art would have had a reasonable expectation of success since Herve discloses wherein additive A is of the block type.
In regards to instant claim 1 reciting wherein agent C is an amphiphilic compound having a first part of its structure that can react chemically or physically with the thermoplastic polymer matrix and a second part of its structure that can react chemically or physically with the at least one compound P, the random polymer of the prior art has EO and PO. As noted in the instant specification in paragraph [0074], EO is hydrophilic and PO is hydrophobic. As noted in the instant specification in paragraph [0075], the EO block is solubilized in compound P, while the PO block is solubilized in thermoplastic polymeric matrix M. Thus, the random polymer of the prior art meets the claim limitation.
In regards to instant claim 1, reciting wherein the spherical particles contain migrated fillers in an amount not more than 5000 mg/kg, as noted in the instant specification in paragraph [00106], the amount of migrated fillers appears to depend on the amount of agent C added. Table 1 of the instant specification shows wherein agent C may be 10 wt. %. Therefore, since composition of the prior art comprises substantially the same agent C claimed in substantially the same amount as claimed, as discussed above, the composition of the prior art would necessarily have substantially the same claimed amount of migrated fillers.
2. Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Herve (US 2010/0009189, Jan. 14, 2010) in view of Canova et al. (US 2015/0147364, May 28, 2015) (hereinafter Canova), La Grande et al. (US 2004/0242788, Dec. 2, 2004) (hereinafter La Grande), Gyobu et al. (JP 2001172411 A, Jun. 26, 2001) (hereinafter Gyobu), and further in view of Dadey et al. (US 2008/0299168, Dec. 4, 2008) (hereinafter Dadey).
The teachings of Herve, Canova, La Grande, and Gyobu are discussed above. Herve, Canova, La Grande, and Gyobu do not disclose wherein the thermoplastic polymer is PHA.
However, Dadey discloses an implant including a biodegradable thermoplastic polymer (abstract). The biodegradable thermoplastic polymer may be polyhydroxybutyrate (claim 9).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Herve discloses wherein any thermoplastic polymer material may be used. Accordingly, it would have been obvious to one of ordinary skill in the art to have used polyhydroxybutyrate as the thermoplastic polymer since it is a known and effective thermoplastic polymer as taught by Dadey.
3. Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Herve (US 2010/0009189, Jan. 14, 2010) in view of Canova et al. (US 2015/0147364, May 28, 2015) (hereinafter Canova), La Grande et al. (US 2004/0242788, Dec. 2, 2004) (hereinafter La Grande), Gyobu et al. (JP 2001172411 A, Jun. 26, 2001) (hereinafter Gyobu), and further in view of Natarajan et al. (US 2008/0132631, Jun. 5, 2008) (hereinafter Natarajan).
The teachings of Herve, Canova, La Grande, and Gyobu are discussed above. Herve, Canova, La Grande, and Gyobu do not disclose wherein compound B is PEG with a molecular weight ranging from 1500 to 60000 g/mol.
However, Natarajan discloses a method of preparing a thermoplastic polymer (abstract). Polyethylene glycol having a number-average molecular weight greater than about 150 is a polyoxyalkylene glycol (¶ [0060]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Herve discloses wherein compound B may be a polyoxyalkylene glycol. Accordingly, it would have been obvious to one of ordinary skill in the art to have used PEG having a molecular weight greater than about 150 as compound B since it is a known and effective polyoxyalkylene glycol as taught by Natarajan.
4. Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Herve (US 2010/0009189, Jan. 14, 2010) in view of Canova et al. (US 2015/0147364, May 28, 2015) (hereinafter Canova), La Grande et al. (US 2004/0242788, Dec. 2, 2004) (hereinafter La Grande), Gyobu et al. (JP 2001172411 A, Jun. 26, 2001) (hereinafter Gyobu), Dadey et al. (US 2008/0299168, Dec. 4, 2008) (hereinafter Dadey), and further in view of Natarajan et al. (US 2008/0132631, Jun. 5, 2008) (hereinafter Natarajan).
The teachings of Herve, Canova, La Grande, Gyobu, and Dadey are discussed above. Herve, Canova, La Grande, Gyobu, and Dadey do not disclose wherein compound B is PEG.
However, Natarajan discloses a method of preparing a thermoplastic polymer (abstract). Polyethylene glycol having a number-average molecular weight greater than about 150 is a polyoxyalkylene glycol (¶ [0060]).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. Herve discloses wherein compound B may be a polyoxyalkylene glycol. Accordingly, it would have been obvious to one of ordinary skill in the art to have used PEG as compound B since it is a known and effective polyoxyalkylene glycol as taught by Natarajan.
5. Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Herve (US 2010/0009189, Jan. 14, 2010) in view of Canova et al. (US 2015/0147364, May 28, 2015) (hereinafter Canova), La Grande et al. (US 2004/0242788, Dec. 2, 2004) (hereinafter La Grande), Gyobu et al. (JP 2001172411 A, Jun. 26, 2001), and further in view of Buretea et al. (US 2004/0095658, May 20, 2004) (hereinafter Buretea).
The teachings of Herve, Canova, La Grande, and Gyobu are discussed above. Herve, Canova, La Grande, and Gyobu do not disclose wherein the spherical particles have a spherical shape factor ratio being selected from 0.5 to 1.0.
However, Buretea discloses a composite comprising nanoparticles (abstract). A nanoparticle can be spherical particles having an aspect ratio of about 0.9 to about 1.2 (¶ [0031]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the particles of Herve with an aspect ratio about 0.9 to about 1.2 since the particles are to be spherical and this ratio would produce spherical particles as taught by Buretea.
Response to Arguments
Applicant argues that the claimed agent (C) is an ethoxylated/propoxylated block polymer requiring a molecular weight of 3000-10000 g/mol, whereas Gyobu is consistently directed to a molecular weight of 500-4000 g/mol, with preferred ranges of the copolymerized polyether glycols of 800 to 3000 g/mol, and more preferably 1000 to 2000 g/mol. Additionally, all of the Examples recited in Gyobu use copolymerized polyether glycols having a molecular weight of 2000 g/mol.
The Examiner does not find Applicant’s argument to be persuasive. A prior art reference is evaluated for all that it reasonably suggests and is not limited to preferred embodiments or working examples. Because Gyobu teaches 500-4000 g/mol, which overlaps with the claimed molecular weight of 3000 to 10000 g/mol, the claimed molecular weight is obvious. As such, Applicant’s argument is unpersuasive.
Applicant argues that there is at most a narrow and artificial overlap between Gyobu’s molecular weight and the claimed molecular weight.
The Examiner does not find Applicant’s argument to be persuasive. Even a slight overlap in range establishes a prima facie case of obviousness. In re Peterson, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003). As such, Applicant’s argument is unpersuasive since even a slight overlap is obvious.
Applicant argues that Gyobu contains no teaching or incentive to extend the molecular weight beyond 4000 g/mol, nor any indication that higher molecular weights would be desirable.
The Examiner does not find Applicant’s argument to be persuasive. Because there is an overlap between the claimed molecular weight range and the prior art’s molecular weight range, the claimed molecular weight is obvious. It is not necessary for the prior art to suggest an incentive to extend the molecular weight beyond 4000 g/mol or suggest that higher molecular weights would be desirable. As such, Applicant’s argument is unpersuasive.
Applicant argues that Gyobu operates in a fundamentally different technical context and does not provide any guidance toward the claimed functional role of agent (C).
The Examiner does not find Applicant’s argument to be persuasive. 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 discovered by applicant. See MPEP 2144(IV). Thus, it not necessary for the prior art to teach incorporating a block copolymerized glycol containing PO/EO in a molar ratio of 90/10-30/70 and having a molecular weight of 500-4000 for the same reason as Applicant. The block copolymerized glycol containing PO/EO in a molar ratio of 90/10-30/70 and having a molecular weight of 500-4000 appears to be substantially the same as claimed agent (C). Applicant has not shown wherein the block copolymerized glycol containing PO/EO in a molar ratio of 90/10-30/70 and having a molecular weight of 500-4000 would not function the same as claimed agent (C). As such, Applicant’s argument is unpersuasive.
Applicant argues that it would not have been obvious to substitute the additive (A) in the composition of Herve with the claimed component (C) with reasonable expectation of success because Herve’s additive (A) is fully compatible with the polymer matrix whereas the claimed component (C) has a portion of its structure which is not identical to the polymer matrix.
The Examiner does not find Applicant’s argument to be persuasive. Herve discloses in paragraph [0065] wherein in a preferred embodiment, the compatible structure of the additive A comprises functional groups chemically identical to those of the thermoplastic polymer P. Thus, since this is only in a preferred embodiment, Herve does not require in all embodiments for the compatible structure of the additive A to comprise functional groups chemically identical to those of the thermoplastic polymer P. As such, Applicant’s argument is unpersuasive.
Applicant argues that Gyobu fails to teach or suggest the claimed agent (C). Therefore, Gyobu does not necessarily have substantially the same claimed amount of migrated fillers.
The Examiner does not find Applicant’s argument to be persuasive. As discussed in the rejection, since composition of the prior art comprises substantially the same agent C claimed in substantially the same amount as claimed, as discussed above, the composition of the prior art would necessarily have substantially the same claimed amount of migrated fillers. As discussed above, Gyobu does teach the claimed agent (C). Therefore, the claim limitation on migrated fillers is still obvious and Applicant’s argument is unpersuasive.
Applicant argues that there’s improper hindsight.
The Examiner does not find Applicant’s argument to be persuasive. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Applicant has not shown wherein knowledge gleaned only from the applicant's disclosure was used to support obviousness. As such, Applicant’s argument is unpersuasive.
Applicant argues that Dadey, Natarajan, and Buretea fail to teach or suggest what Herve in view of Canova, La Grande, and Gyobu lack.
The Examiner submits that arguments regarding Herve in view of Canova, La Grande, and Gyobu have been addressed above and are unpersuasive. Therefore, the rejections are maintained.
Conclusion
Claims 1-3, 5-7, 10, 11, 13-15, 17-21, 23 and 25 are rejected.
No claims are 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.
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/TRACY LIU/Primary Examiner, Art Unit 1614
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