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
Claims 1-15 as filed June 30, 2023 are under consideration.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on June 30, 2023 and May 28, 2025 were considered.
Specification
The disclosure is objected to because of the following informalities: in the abstract the recitation of about 0.1 to 35 wt% of a fatty acid dimer differs from the amount claimed (e.g., claim 1) and the amounts disclosed (e.g., paragraphs 9, 10, 62, 63, 110, 111). Appropriate correction is required.
Claim Objections
Claims 1, 2, 5 and 9-13 are objected to because of the following informalities:
Claims 1, 9: “natural based” in the wherein clause should presumably recite “natural oil-based” consistent with the antecedent in the preamble.
Claim 2: “and acid value” should presumably recite “an acid value”
Claims 5, 12, 13 recite percentages without providing a basis for the determination thereof, e.g., by weight consistent with claim 1.
Claim 10: “an” should presumably be inserted before “acid” and “20” should presumably recite “20.0” consistent with the precision of claim 2.
Claim 11: “having” should presumably recite “has”.
Appropriate correction is required.
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of 35 U.S.C. 112 (pre-AIA ). See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/134,004, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph for one or more claims of this application. The prior-filed application does not disclose the esterification product of claim 1 but rather (e.g., claim 1; also, abstract and paragraphs 8, 9, 56, 93-96):
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Disclosure of a sub-genus does not support the full breadth of the genus instantly claimed.
The disclosure of the prior-filed application, Application No. 63/156,551, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph for one or more claims of this application. The prior-filed application does not disclose the esterification product of claim 1 but rather (e.g., claim 1; also, abstract and paragraphs 8, 9, 56, 95-98):
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Disclosure of a sub-genus does not support the full breadth of the genus instantly claimed.
The earliest date available to the pending claims is January 5, 2022.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kurth et al. (WO 2019/140375, published July 18, 2019, IDS reference filed June 30, 2023).
Kurth teaches a flexible wax and method of making the same, the method comprising mixing fatty acid and/or oil, a fatty acid dimer and glycerin to form a mixture and facilitating esterification and transesterification reactions until the mixture achieves an acid value of less than 1.5 (title; abstract; claims, in particular 19; paragraphs [00059], [00067], [00068], [00089], [00102]; Examples), as required by instant claims 2, 10. The wax has a drop point from about 50 to 60 ºC (claim 13; paragraphs [00065], [00084]; Table 6), as required by instant claims 8, 14. The wax is a natural oil-based wax (claim 14; paragraphs [00026], [00028]). The wax has utility in personal care (cosmetic) (claim 18; paragraph [00084]), as required by instant claim 15.
Fatty acids include C8, …, C18 or stearic acid (100%), … and C22 fatty acids (paragraphs [00057], [000102]), as required by instant claims 3, 5, 12.
Oils include castor oil (100%); the oil may be partially or fully hydrogenated and may be present individually or as mixtures (paragraphs [00026], [00097]), as required by instant claims 4, 5, 13.
The fatty acid dimer acts as a crosslinker, imparting flexibility and may be obtained from commercial sources such as Radiacid 0960 (paragraphs [00068], [00089], [000101]). The reaction mixture comprises about 20 to 30 wt% glycerin and about 15 to 30 wt% dimer (implies the balance of the reaction mixture comprises about 100 – ((20+15) to (30+30)) ~ = about 65 to 40 wt%) fatty acid and/or oil) (paragraph [000103]). Exemplary formulations comprise (Table 2):
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where TRV 1895 (Fatty Acid) comprises 93.5% stearic acid (Table 2).
Kurth fails to specifically teach or exemplify an embodiment of a product comprising an esterification product of a mixture comprising about 0.1 to 20 wt% fatty acid dimer, about 5 to 30 wt% of a C8-C22 fatty acid, and about 65 to 95 wt% of a hydrogenated natural oil as required by claims 1 an 9 and therefore anticipation cannot be found. However, a reference is analyzed using its broadest teachings and the specific combination of features claimed is disclosed within the broad generic ranges taught by the Kurth. See MPEP 2123 and 2141. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to prepare a wax according to Kurth by esterifying a mixture comprising about 0 to 65 wt% of a fatty acid inclusive of stearic acid, about 0 to 65 wt% of an oil inclusive of hydrogenated castor oil, and about 15 to 30 wt% of a fatty acid dimer inclusive of Radiacid 0960 because such is an embodiment disclosed by Kurth.
Regarding claims 6, 7, 11 which recite cone penetration values of greater than 20, between 20 and 250, because Kurth renders obvious the esterification product as instantly claimed comprising the same reactants as instantly claimed and as instantly disclosed (e.g., paragraph [0079] of the instant specification discloses the same dimers as set forth in Kurth), each present in amounts which overlap the instantly claimed amounts, it necessarily follows that these esterification products must also have cone penetration values as instantly claimed because a chemical composition and its properties are inseparable. See MPEP 2112.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kurth et al. (WO 2019/140375, published July 18, 2019, IDS reference filed June 30, 2023) as applied to claims 1-15 above, and further in view of Bekker et al. (US 2014/0336272, published November 13, 2014).
Kurth is applied herewith under a different interpretation of the cone penetration limitations in the interest of compact prosecution
The teachings of Kurth have been described supra.
Although Kurth renders obvious the esterification product as instantly claimed, Kurth does not specifically teach cone penetration values of greater than 20, between 20 and 250 as required by claims 6, 7, 11.
This deficiency is made up for in the teachings of Bekker.
Bekker teaches a petrolatum composition comprising a wax, branched paraffins, a linear paraffin and optionally a low melt wax; the composition has a drop melt point of 35 to 80 ºC and a cone penetration of between 60 and 300 mm/10 (title; abstract; claims, in particular 1, 9, 10), as required by instant claims 6, 7, 11.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to that the wax of Kurth would possess a cone penetration of between 60 and 300 mm/10 as taught by Bekker because wax compositions having drop melt points consistent with that of Kurth are also characterized by this property.
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over (A) claims 1-16 of copending Application No. 18/260,109 and (B) claims 1-6 of copending Application No. 18/260,117 in view of Kurth et al. (WO 2019/140375, published July 18, 2019, IDS reference filed June 30, 2023).
The instant claims are drawn to an esterification product of a mixture comprising about 0.1 to 20 wt% fatty acid dimer, about 5 to 30 wt% C8-C22 fatty acid, and about 65 to 95 wt% hydrogenated natural oil, wherein the product has an acid value of less than 25, and to a personal care product thereof. The C8-C22 fatty acid may comprise stearic acid. The hydrogenated natural oil may comprise hydrogenated castor oil. The product may have a cone penetration value greater than 20, between 20 and 250 or a melt drop point between 30 and 65 ºC.
The copending ‘109 claims are drawn to an esterification product of a mixture comprising about 15 to 25 wt% fatty acid dimer and about 55 to 70 wt% hydrogenated natural oil, wherein the product has an acid value of less than about 5, to a personal care product thereof, and to a production method thereof. The hydrogenated natural oil may comprise hydrogenated castor oil. The product may have a drop point between 30 and 60 ºC or a cone penetration of about 20 to 100. The copending ‘109 claims differ from the instant claims with respect to the recitation of the C8-C22 fatty acid, the amount thereof, and the species thereof.
The copending ‘117 claims are drawn to an esterification product of a mixture comprising about 0.1 to 40 wt% fatty acid dimer and about 99.9 to 60 wt% of components inclusive of hydrogenated natural oils or/and fatty acids, wherein the product has a cone penetration value of greater than 10, and to a personal care product thereof. The copending ‘117 claims differ from the instant claims with respect to the recitation of the C8-C22 fatty acid, the amount thereof, and the species thereof, with respect to the species of hydrogenated natural oils, with respect to the acid value and with respect to the drop point.
The difference between the copending claims and the instant claims are bridged by the teachings of Kurth as elaborated supra. In view of Kurth, it would have been prima facie obvious to modify the mixtures of the copending claims to comprise about 0 to 65 wt% of a fatty acid inclusive of stearic acid because fatty acids are taught to be interchangeable with oils inclusive of hydrogenated oils. It would have been obvious to substitute hydrogenated oils as taught by Kurth inclusive of hydrogenated castor oil for the hydrogenated natural oils of the copending ‘117 claims. Because the copending ‘117 claims in view Kurth are drawn to the same product made by the same process (e.g., esterification to an acid value of less than 1.5), it is presumed that the product of the copending ‘117 claims would also share the same properties as expressly disclosed by Kurth (e.g., drop point).
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kulkarni et al. “Some physical properties of castor oil esters and hydrogenated castor oil esters,” European Journal of Lipid Science and Technology 105:214-218, 2003 teaches castor oil and hydrogenated castor oil esters inclusive of esters prepared with C18 fatty acid or stearic acid having a purity of 98% (title; abstract; section 2.1).
O’Lenick, Jr. et al. (US 6,342,527) teaches polymeric castor oil polyesters which are the reaction product of the hydroxyl group of castor oil with less than one equivalent of a fatty acid and then with an equivalent of a diacid and exemplifies an embodiment wherein 846.0 grams castor oil is reacted with 132.5 grams stearic acid (title; abstract; claims; Tables, Examples 10, 34).
Klimek et al. (EP 970,998 A1, as evidenced by the Google translation) teaches a wax ester of Vaseline-like consistency derived from at least two different linear and/or branched monohydric alcohols and dicarboxylic acids (preferably dimer acids) (title; abstract; claims).
Noguchi (JP 2013-103929 A, as evidenced by the Google translation) teaches a hair cosmetic containing transesterified fat and oil prepared by a transesterification reaction between a vegetable fat and oil and a hydrogenated vegetable fat and oil (title; abstract; claims).
Takeda et al. (JP 2003-238332 A, as evidenced by the Google translation) teaches an oligomer of hardened (hydrogenated) castor oil with dimer acid (title; abstract; claims).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID BLANCHARD can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALISSA PROSSER/
Examiner, Art Unit 1619
/MARIANNE C SEIDEL/Primary Examiner, Art Unit 1600
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