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 .
Election/Restrictions
Applicant’s election without traverse of Group I – claims 1-13 in the reply filed on 11/24/2025 is acknowledged. Furthermore, Applicant’s attorney of record, Scott Dyar was contacted by the examiner on 12/19/2025 as the response to election filed by Applicant failed properly respond to the species election within the requirement for election filed on 09/24/2025. Attorney Scott Dyar returned call on 12/24/2025 and left a message electing species A – glyceryl monostearate, species B – sodium stearate, and species C – lecithin. The election of species was made without distinctly and specifically pointing out any errors in the election requirement, therefore, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Upon further search and consideration the species B – salt of a fatty acid is broadened to include: sodium stearate and C16-C25 linear fatty acid salt.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 05/06/2024, 07/25/24, 12/02/2024, and 11/24/2025 are being considered by the examiner. Many of the foreign patents only have English translations of the abstract, therefore, only the abstracts for these patents are considered by the examiner. Furthermore, a few on the non-patent literature documents are missing from the application folder or are missing an English translation, therefore these documents not considered by the examiner.
Abstract
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Applicant’s abstract currently states “The present disclosure relates to” which as noted above should be avoided. Appropriate correction is requested.
Claim Interpretation
Claims 1 and 3-4, utilize the relative term "about". The term “about” is defined in Applicant’s specification as “the term "about" allows for a degree of variability in a value or range within 10% of a stated value or of a stated limit of a range.” Therefore, the term “about” in claims 1 and 3-4 will be broadly interpreted by the examiner to mean +/- 10%.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 5 is rejected 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.
Claim 5 is dependent on claim 1 which requires “one or more zwitterions” and claim 5 recites “the composition comprises a lecithin or a hydrolyzed lecithin comprising at least one of the zwitterions”. Claim 5’s limitation is unclear whether it is directed towards the one or more zwitterions within claim 1 or if the zwitterion is an additional zwitterion, thus rendering the claim indefinite.
For the purpose of moving prosecution forward, Examiner broadly interprets claim 5 to be the zwitterion of claim 1. Therefore, any prior art teaching the limitations of the instant claim 1 will teach claim 5.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-13 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Fisher et al. (US20240008501A1, published 01/11/2024, priority date 07/06/2022, hereafter Fisher).
The applied reference has a common Applicant and Inventor 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. 102(a)(2) 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) if the same invention is not being claimed; 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 in the reference 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.
Fisher claims an edible composition comprising a coating mixture comprising about 75-98wt% of one of more monoglycerides; about 1-5wt% of one or more fatty acid salts; about 1-20 wt% of one or more of lecithin an ammonium phosphatide and lysolecithin; a base; and a solvent (claim 1; according to the claim limitations of the instant claims 1 and 3-13). Furthermore, Fisher claims the coating comprises lecithin and claims the lecithin is de-oiled (claims 2-3; according to the claim limitations of the instant claims 1 and 3-9). Claim 4 of Fisher claims the one or more of lecithin, the ammonium phosphatide, and lysolecithin is present in the coating mixture in an amount in a range of about 1 wt % to about 15 wt % (according to the claim limitations of the instant claims 1 and 3-4). Claim 5 of Fisher claims the coating mixture comprises ammonium phosphatide and claim 6 claims the coating comprises lysolecithin (according to the claim limitations of the instant claims 1 and 3-9). Fisher claims wherein the one or more monoglycerides is present in the coating mixture in an amount of about 80 wt % to about 98 wt % (claim 7; according to the claim limitations of the instant claims 1 and 3-4). Claim 8 of Fisher claims the base of claim 1 comprises one or more of NaOH, LiOH, KOH, K2CO3, Na2CO3, Li2CO3, KHCO3, LiHCO3, and NaHCO3(according to the claim limitations of the instant claim 2). Fisher claims each of the one or more monoglycerides comprises a carbon chain length of about C10 to about C22 and claims the monoglyceride to be glyceryl monostearate (claims 12-13; according to the claim limitations of the instant claims 1, 3, and 10). Furthermore, Fisher claims wherein each of the one or more fatty acid salts comprises a carbon chain length of about C10 to about C20 or more specifically wherein each of the one or more fatty acid salts comprises a carbon chain length selected from the group of: C10, C12, C14, C16, C18, or C20 (claims 14-15; according to the claim limitations of the instant claims 1, 3, and 11-12). Claim 16 of Fisher claims the at least one of the one or more fatty acid salts comprises a carbon chain length of C18 and claim 17 claims the fatty acid salt is sodium stearate (according to the claim limitations of the instant claims 1, 3, and 11-12).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (WO2012129722A1, published 10/04/2012, hereafter Xu) in view of Shchipunov (Shchipunov, Yu A. "NOMENCLATURE, STRUCTURE, SOURCES, COMPOSITION, AND PROCESSING." (2002)., hereafter Shchipunov).
Xu claims a solid cosmetic composition in the form of an oil in water emulsion for making up and/or caring for the skin and/or lips comprising (a) C16-C25 linear fatty acid salt in a content of more than or equal to 1% by weight and of less than or equal to 15% by weight, (b) water, (c) at least one fatty phase comprising oil and/or pasty fatty compounds (claim 1; according to the claim limitations of the instant claims 1 and 3-13). Claim 2 of Xu claims the C16-C25 linear fatty acid salt to be in a concentration between 1% and 15% by weight, in particular between 4% and 9% by weight, even more particularly between 7.5% and 8.5% by weight (according to the claim limitations of the instant claim 1, 3-4, and 11-12). Furthermore, claim 3 of Xu claims the C16-C25 linear fatty acid salt to be selected from a group to include sodium stearate and sodium behenate (according to the claim limitations of the instant claims 1, 3-4, and 11-12). Claim 11 of Xu claims the composition further comprises a moisturizing agent and claim 13 of Xu claims the moisturizing agent to be present in between 0.1% and 40% by weight, in particular between 5% and 25% by weight, and even more particularly between 10% and 20% by weight (according to the claim limitations of the instant claims 1 and 3-4). Xu claims the composition to further comprise an additional emulsifier at a concentration of between 1% and 35% by weight (claims 14 and 16; according to the claim limitations of the instant claims 1 and 3-4). Xu claims the additional emulsifier is selected from a group to include glyceryl stearate (claim 15; according to the claim limitations of the instant claims 1, 3, and 10). Xu teaches the addition of lecithin, such as soybean lecithins (for instance Emulmetik 100 J from Cargill, or Biophilic H from Lucas Meyer) (page 21, lines 33-34; according to the claim limitations of the instant claims 1 and 3-9). Lastly, Xu teaches the addition of pigments to include inorganic pigments such as manganese violet, ultramarine blue, an ferric blue (page 25-26, lines 32-34 and 1-2 respectively; according to the claim limitation of the instant claim 2).
Although Xu teaches the addition of lecithin, if fails to teach a concentration of lecithin specifically as in instant claims 1 and 3-4.
Shchipunov teaches the use of lecithin, specifically in cosmetics at a concentration of 0.5-5%, as a moisturizer (page 3011, paragraph 3). Furthermore, Shchipunov taches that lecithin is especially useful to provide a prolonged moisturizing effect (page 3011, paragraph 3).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim a cosmetic composition comprising glyceryl monostearate, sodium stearate, and a moisturizing agent at the desired concentrations as outlined by Xu with the simple substitution of lecithin as the moisturizing agent as outline by Shchipunov. Simple substitution of one moisturizing agent for another is within the purview of the skilled artisan and would yield predictable results.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 12-17 of copending Application No. 18/218,944 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
18/218,944 claims an edible composition comprising a coating mixture comprising about 75-98wt% of one of more monoglycerides; about 1-5wt% of one or more fatty acid salts; about 1-20 wt% of one or more of lecithin an ammonium phosphatide and lysolecithin; a base; and a solvent (claim 1; according to the claim limitations of the instant claims 1 and 3-13). Furthermore, 18/218,944 claims the coating comprises lecithin and claims the lecithin is de-oiled (claims 2-3; according to the claim limitations of the instant claims 1 and 3-9). Claim 4 of 18/218,944 claims the one or more of lecithin, the ammonium phosphatide, and lysolecithin is present in the coating mixture in an amount in a range of about 1 wt % to about 15 wt % (according to the claim limitations of the instant claims 1 and 3-4). Claim 5 of 18/218,944 claims the coating mixture comprises ammonium phosphatide and claim 6 claims the coating comprises lysolecithin (according to the claim limitations of the instant claims 1 and 3-9). 18/218,944 claims wherein the one or more monoglycerides is present in the coating mixture in an amount of about 80 wt % to about 98 wt % (claim 7; according to the claim limitations of the instant claims 1 and 3-4). Claim 8 of 18/218,944 claims the base of claim 1 comprises one or more of NaOH, LiOH, KOH, K2CO3, Na2CO3, Li2CO3, KHCO3, LiHCO3, and NaHCO3(according to the claim limitations of the instant claim 2). 18/218,944 claims ach of the one or more monoglycerides comprises a carbon chain length of about C10 to about C22 and claims the monoglyceride to be glyceryl monostearate (claims 12-13; according to the claim limitations of the instant claims 1, 3, and 10). Furthermore, 18/218,944 claims wherein each of the one or more fatty acid salts comprises a carbon chain length of about C10 to about C20 or more specifically wherein each of the one or more fatty acid salts comprises a carbon chain length selected from the group of: C10, C12, C14, C16, C18, or C20 (claims 14-15; according to the claim limitations of the instant claims 1, 3, and 11-12). Claim 16 of 18/218,944 claims the at least one of the one or more fatty acid salts comprises a carbon chain length of C18 and claim 17 claims the fatty acid salt is sodium stearate (according to the claim limitations of the instant claims 1, 3, and 11-12).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-8, and 10-11 of copending Application No. 18/509,887(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
18/509,887 claims an edible coating composition comprising a multiplicity of particles, each comprising a homogeneous mixture of: about 50 wt% to about 98 wt% of one or more monoglycerides; and about 1 wt% to about 10 wt% of one or more fatty acid salts (claim 1; according to the claim limitations of the instant claims 1, and 3-4). Furthermore, 18/509,887 claims the homogenous mixture comprises about 80 wt% to about 98 wt%, 85 wt% to about 98 wt%, about 90 wt% to about 98 wt%, about 92 wt% to about 97 wt%, or about 95 wt% of the one or more monoglycerides (claim 2; according to the claim limitations of the instant claims 1, and 3-4). Claim 3 of 18/509,887 claims each of the one or more monoglycerides comprises a carbon chain length of C10 to C22 and claim 4 of 18/509,887 claims the one of the one or more monoglycerides is glyceryl monostearate (according to the claim limitations of the instant claims 1, 3, and 10). Furthermore, claim 6 of 18/509,887 claims each of the one or more fatty acid salts comprises a carbon chain length of C10 to C22 and claim 7 of 18/509,887 claims the one of the one or more fatty acid salts is sodium stearate (according to the claim limitations of the instant claims 1, 3, and 11-12). Claim 8 of 18/509,887 claims the homogenous mixture further comprises an emulsifier and claim 10 of 18/509,887 claims the emulsifier comprises one or more of lecithin, an ammonium phosphatide, and lysolecithin (according to the claim limitations of the instant claims 1, 3, and 5-9). Claim 11 of 18/509,887 claims the edible coating composition further comprises sodium chloride (according to the claim limitations of the instant claim 2).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, and 3-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, and 7-13 of copending Application No. 18/371,767 (reference application) in view of Shchipunov (Shchipunov, Yu A. "NOMENCLATURE, STRUCTURE, SOURCES, COMPOSITION, AND PROCESSING." (2002)., hereafter Shchipunov). Although the claims at issue are not identical, they are not patentably distinct from each other.
18/371,767 claims a composition comprising one or more monoglycerides of a C4-C28 fatty acid, present in a total amount of about 15 wt% to about 99 wt% of the composition; and one or more alkyl esters of a C8-C20 fatty acid, present in a total amount of about 1 wt% to about 75 wt% of the composition (claim 1; according to the claim limitations of the instant claims 1 and 3-4). Claim 2 of 18/371,767 claims wherein: the one or more monoglycerides are present in a total amount of about 70 wt% to about 99 wt% of the composition; and the one or more alkyl esters are present in a total amount of about 1 wt% to about 15 wt% of the composition (according to the claim limitations of the instant claims 1 and 3-4). Claim 3 of 18/371,767 claims wherein: the one or more monoglycerides are present in a total amount of about 15 wt% to about 85 wt% of the composition; and the one or more alkyl esters are present in a total amount of about 15 wt% to about 75 wt% of the composition (according to the claim limitation of the instant claims 1 and 3-4). Claim 4 of 18/371,767 claims the composition further comprising one or more salts of a C4-C28 fatty acid, present in a total amount of 0.1 wt% to about 30 wt% of the composition (according to the claim limitations of the instant claims 1 and 3). 18/371,767 further claims one or more monoglycerides of a C4-C28 fatty acid; and one or more alkyl esters of a C8-C20 fatty acid, wherein a ratio of a total number of moles of the one or more monoglycerides to a total number of moles of the one or more alkyl esters is about 100:1 to about 1:5 (claim 4; according to the claim limitations of the instant claims 1 and 3). 18/371,767 claims a composition comprising: one or more monoglycerides of a C4-C28 fatty acid; and one or more alkyl esters of a C8-C20 fatty acid, wherein a ratio of a total number of moles of the one or more monoglycerides to a total number of moles of the one or more alkyl esters is about 100:1 to about 1:5 (according to the claim limitations of the instant claims 1 and 3). Claims 8 of 18/371,767 claims the composition further comprising one or more salts of a C8-C20 fatty acid (according to the claim limitations of the instant claims 1 and 3). Claim 9 of 18/371,767 wherein the one or more alkyl esters each independently comprise a C1-C5 alkyl ester and claim 10 claims each of the one or more alkyl esters independently comprises a compound of Formula III:
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. (according to the claim limitations of the instant claims 1, 3, and 11-12). Claim 11 of 18/371,767 claims each of the one or more monoglycerides independently comprises a compound of Formula I-i or Formula I-ii:
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(according to the claim limitations of the instant claims 1, 3, and 10). Claim 12 of 18/371,767 claims each of the one or more salts present in the composition independently comprises a compound of Formula II:
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(according to the claim limitations of the instant claims 1, 3, and 11-12). Lastly, claim 13 of 18/371,767 claims a mixture comprising the composition of claim 1; and a solvent (according to the claim limitations of the instant claim 13).
18/371,767 fails to claim the addition of a zwitterion such as lecithin as in instant claims 1 and 3-9.
As outline above, Shchipunov teaches that lecithin is commonly used in cosmetics at a concentration of 0.5-5%, as a moisturizer. Furthermore, Shchipunov teaches the use of lecithin in food, such as baked goods at a concentration of 0.1-1.0%, confectionary at a concentration of 0.2-1.0%, ice cream/whipped toppings at a concentration of 0.15-0.5%, instant foods at a concentration of 0.5-3.0%, and oils/fats at a concentration of 0.1-2% (page 3008, paragraphs 6 and 8 and page 3010, paragraphs 2-4). Shchipunov teaches the use of lecithin in animal feed and nonfood uses (page 3010, paragraphs 7-8). Shchipunov teaches that one of lecithin’s major nonfood uses is in the coating industry (page 3010, paragraph 8).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim a composition comprising one or more C4-C28 monoglycerides and one or more C8-C20 fatty acids as outlined by 18/371,767 with the ready for improvement with the known technique of adding a zwitterion, such as lecithin, at a concentration of 0.1 to 3% as outlined by Shchipunov. Adding lecithin which is known to be used in coating compositions along with a variety of agricultural and cosmetic uses as claimed by instant claims 1 and 3-9 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA NICOLE ISNOR whose telephone number is (703)756-5561. The examiner can normally be reached Monday-Friday 5:30am-3pm PST.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./ Examiner, Art Unit 1611