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 .
Claim Objections
Claim 15 is objected to because of the following informalities: the term “that” at line 6 should be “than”. Appropriate correction is required.
Claim Rejections - 35 USC § 101/112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The claimed invention of claim 15 is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because the recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e. results in a claim which is not a proper process claim
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 15 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 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.
Claims 1-15 are 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.
Regarding claims 1, 6, 8 and 9, the phrase "particularly" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Claim 5 recites “(CAS: [68515-73-1]): within parenthesis and it is not clear if the phrase is a limitation of the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “mixture of branched and linear saturated C15-C19 alkanes is more than 80% by weight”, and the claim also recites “preferably more than 90% by weight, most preferred more than 92% by weight” which is the narrower statement of the range/limitation;
claim 2 recites the broad recitation “less than 10% by weight”, and the claim also recites “preferably less than 8% by weight, most preferred more than 5% by weight” which is the narrower statement of the range/limitation;
claim 3 recites the broad recitation “more than 50% by weight”, and the claim also recites “preferably more than 60% by weight, even more preferably more than 70% by weight” which is the narrower statement of the range/limitation;
claim 6 recites the broad recitation “between 1:15 and 5:1”, and the claim also recites “preferably between 1:10 and 4:1, more preferably between 1:8 and 3:1” which is the narrower statement of the range/limitation;
claim 8 recites the broad recitation “C14-C18 fatty acid”, and the claim also recites “particularly a linear C14-C18 fatty acid, most preferably palmitic acid” which is the narrower statement of the range/limitation;
claim 9 recites the broad recitation “between 3 and 20”, and the claim also recites “particularly between 8 and 16” which is the narrower statement of the range/limitation;
claim 10 recites the broad recitation “more than 2.5”, and the claim also recites “preferably between 2.7 and 3.5, more preferably between 28 and 3.4, most preferably between 2.8 and 3.2 per glucose unit” which is the narrower statement of the range/limitation;
claim 11 recites the broad recitation “molecular weight between 8,000 and 16,000 Da”, and the claim also recites “preferably between 9,000 and 13,000, more preferably between 10,000 and 11,500 Da” which is the narrower statement of the range/limitation;
claim 14 recites the broad recitation “10 or higher”, and the claim also recites “preferably of 20 or higher, more preferred of 30 or higher, even more preferred 50 or higher” which is the narrower statement of the range/limitation; and
claim15 recites the broad recitation “a mixture”, and the claim also recites “preferably in combination with an ester of a fatty acid and dextrin” which is the narrower statement of the range/limitation
claim 15 recites the broad recitation “saturated C15-C319 alkanes is more than 80% by weight”, and the claim also recites “preferably more than 90% by weight, most preferred more than 92% by weight” which is the narrower statement of the range/limitation;
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
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.
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.
Claim(s) 1-12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Lorant et al. (US Patent Pub. 2021/0177719) in view of Galle et al. (US Patent Pub. 2023/0310291).
Lorant et al. disclose a cosmetic emulsion composition having an increased sun protection factor (ABSTRACT). Lorant et al. disclose the composition comprises an UV-screening agent, such as Tinosorb M®, which meet the limitation of the UV filter of formula (I) at a concentration of 0.1% to 45% of the composition ([0163] and [0274]). Lorant et al. disclose the composition comprises an oil including a mixture of C15-C16 branched alkanes, such as Emogreen L15, at a concentration of 0.5 to 70%, which meets the limitation of the alkanes of instant claims ([0410]). Lorant et al. disclose a composition comprising dextrin palmitate ([0461]). The weight ratio of the UV filter of formula (I) to the ester of a fatty acid and dextrin would be meet when the components are within the formulation at 1% for each component. Lorant et al. disclose the composition comprises gelling agents, which would provide a gel formulation ([0422]). Lorant et al. disclose the specific UV screening agents and the amount used determine the sun protection factor desired ([0003]).
Lorant et al. is discussed above and differs from the instant claims insofar as they do not disclose the C15-C19 alkane.
Galle et al. disclose photoprotective compositions C15-C19 alkanes, i.e. Emogreen L15 and Emogreen L19 (Examples). Emogreen L19 meets the limitation of the C15-C19 of the instant claims.
The prior discloses compositions containing an ester of a fatty acid and dextrin; a mixture of branched and linear saturated C15-C19 alkanes and an UV-filter of formula (I). Together these would provide a composition as claimed instantly.
One of ordinary skill in the art would expect the ester of a fatty acid and dextrin to contain the properties as claimed in the instant claims.
It would have been obvious to one of ordinary skill in the art to have formulated the composition to have the claimed SPF since the references teaches the amount of UV Filter and the kind determines the SPF of the formulation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NANNETTE HOLLOMAN whose telephone number is (571)270-5231. The examiner can normally be reached Monday-Friday 9am-6pm.
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/NANNETTE HOLLOMAN/Primary Examiner, Art Unit 1612