DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-12 are pending and represent all claims currently under consideration.
Response to Amendment
The amendment filed 10/17/2025 has been entered.
Claims 1-12 were amended. No new material was added.
Applicant’s amendments have overcome the previous objections to the specification and claims, and the previous rejections of claims 1-6 under 35 U.S.C. 112.
The rejection of claims 7-12 under 35 U.S.C. 112(b) has been modified to address the amendments and maintained.
The rejection of claims 1-12 under 35 U.S.C. 103 has been modified to address the amendments and maintained.
Response to Arguments
Applicant's arguments filed 10/17/2025 have been fully considered but they are not persuasive.
Applicant argues that the present invention implements a very different technical solution with improved mimicry of petrolatum, because the reactants can react with one another in a myriad of ways to create a complex mixture, and that the esterification involves all three types of esterification reactions (Remarks, pages 9-10). This argument is not persuasive, Kurth teaches the natural oil derivative can be derived from combinations of methods known in the art including transesterification, esterification, and interesterification (Kurth, page 6, paragraph 00027). While Kurth does not specifically use the term “dehydration reactions” for the creation of ester bonds as claimed, as defined by the instant specification the term “esterification” means the creation of an ester bond including 1) the dehydration reaction of an alcohol with an acid; 2) transesterification; or 3) interesterification (specification, page 8, paragraph 0040). Therefore, the esterification taught by Kurth would be expected to include dehydration reactions as claimed. Further there is no evidence provided to support the assertion that the present invention provides an improved mimicry of petrolatum as compared to the invention of Kurth.
Applicant argues that the in the present invention, the glycerol, fatty acid, fatty acid dimer, and oil are all present, and states that Kurth fails to teach or suggest co-reacting a glycerol, fatty acid, fatty acid dimer, and hydrogenated oil together in the same reaction mixture (Remarks, pages 9-10), and that Filippi fails to cure this deficiency (Remarks, page 12). This argument is not persuasive, because Kurth states the method comprises mixing fatty acid and/or oil, a fatty acid dimer, and glycerin (i.e., glycerol) to form a reaction mixture (i.e., the pre-esterification mixture; Kurth, claim 19), suggesting the presence of all four listed components. Further, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. See MPEP 2144.06(I). Therefore, it would be obvious to combine the specific ingredients of Kurth as stated in the rejection below.
Applicant argues that Kurth fails to teach or suggest using the claimed branched fatty acid and that the combination of Kurth and Filippi is improper, because Filippi makes clear that the oil is used in combination with esters and is not used as a co-reactant to form those esters (Remarks, pages 10-11). This argument is not persuasive, because as stated in the rejection below, Kurth teaches non-limiting examples of fatty acids include C18 fatty acids (Kurth, page 13, paragraph 00057), which could refer to branched and non-branched fatty acids. Further, Filippi teaches “the ester resulting from the esterification of hydrogenated castor oil with isostearic acid” (Filippi, page 5, paragraph 0093), making it clear that the hydrogenated oil is used as a co-reactant with the fatty acid to form the esters.
Applicant argues that there is nothing in Filippi that teaches or suggests using a branched fatty acid ester incorporating stearic acid in the dimer-containing ester (Remarks, page 12). This argument is not persuasive, because the branched fatty acid ester comprising isostearic acid is part of the C8 to C22 fatty acid as claimed, not the fatty acid dimer as suggested by this argument.
Information Disclosure Statement
The information disclosure statement filed 10/21/2025 has been considered.
Modified/Maintained 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 7-12 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 claim 7, the phrase “natural oil-based petrolatum composition” is unclear, because the phrasing indicates petrolatum is a part of the composition. The instant specification, however, makes clear that natural oils such as those of the instant invention are an intended as alternative to petrolatum (instant specification, page 1, paragraph 0005), which is a byproduct of petroleum refining (instant specification, page 1, paragraph 0003). Based on the other amendments made to the claims, it appears the limitation “petrolatum” is not intended to be a part of the invention and should be removed.
Regarding claims 8-12, each claim is dependent on the rejected claim 7 and does not cure its deficiencies.
Modified/Maintained 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.
Claims 1-12 is are rejected under 35 U.S.C. 103 as being unpatentable over Kurth (WO 2019140375 A1; IDS reference, 06/30/2023), further in view of Filippi (US 2006013788 A1; IDS reference, 06/30/2023). The references were cited previously by the Examiner.
Regarding claim 1, Kurth teaches a wax composition which is natural-oil based (Kurth, page 6, paragraph 00028) comprising at least 40% by weight of soybean oil (Kurth, claim 12), which overlaps the claimed range of 20-40%, and teaches soybean oil is a natural oil which can be hydrogenated (Kurth, page 5, paragraph 00026). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I). Kurth further teaches a composition resulting from the esterification of a pre-melt mixture (Kurth, page 25, paragraph 000108) comprising a fatty acid dimer in 17% by weight, glycerin (i.e., glycerol) in 20% by weight, and a fatty acid in 52% by weight (Kurth, page 25, table 2, “405E”), which all lie within the claimed ranges, resulting in a product with an acid value of 1.5 or lower, which lies within the claimed range of less than 10. Kurth further teaches the natural oil derivative can be derived from combinations of methods known in the art including transesterification, esterification, and interesterification (Kurth, page 6, paragraph 00027). While Kurth does not specifically use the term “dehydration reactions” for the creation of ester bonds as claimed, as defined by the instant specification the term “esterification” means the creation of an ester bond including 1) the dehydration reaction of an alcohol with an acid; 2) transesterification; or 3) interesterification (specification, page 8, paragraph 0040). Therefore, the esterification taught by Kurth would be expected to include dehydration reactions as claimed.
Kurth does not specifically teach the fatty acid is a C8 to C22 fatty acid substituted with one or more C1-C3 alkyl substituents as claimed, but does teach non-limiting examples of such fatty acids include C18 fatty acids (Kurth, page 13, paragraph 00057). Filippi, however, teaches a cosmetic composition comprising a wax which can be a hydrogenated oil (Filippi, pages 8-9, paragraph 0163), a fatty acid dimer (Filippi, claim 4), and the ester product of glycerol and a fatty acid (Filippi, page 5, paragraph 0087) which can be isostearic acid (i.e., a C18 fatty acid substituted with one C1 alkyl substituent; Filippi, page 5, paragraph 0087).
Kurth and Filippi are considered to be analogous to the claimed invention, because both Kurth and Filippi and the instant invention are in the same field of natural oil-based personal care compositions. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Kurth to include the specific C18 fatty acid taught by Filippi, because Kurth teaches C18 fatty acids as a non-limiting example (Kurth, page 13, paragraph 00057), while Filippi teaches isostearic acid as a specific embodiment of a reasonable fatty acid for use in an esterification with glycerol as claimed (Filippi, page 5, paragraph 0087).
Regarding claim 2, Kurth and Filippi together teach all the elements of the current invention as applied to claim 1. As above, Kurth does not specifically teach the fatty acid is a C8 to C22 fatty acid substituted with one or more C1-C3 alkyl substituents as claimed, but does teach non-limiting examples of such fatty acids include C18 fatty acids (Kurth, page 13, paragraph 00057). Filippi teaches a fatty acid (Filippi, page 5, paragraph 0087) which can be isostearic acid (i.e., a C18 fatty acid substituted with one C1 alkyl substituent; Filippi, page 5, paragraph 0087). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Kurth to include the specific C18 fatty acid taught by Filippi, because Kurth teaches C18 fatty acids as a non-limiting example (Kurth, page 13, paragraph 00057), while Filippi teaches isostearic acid as a specific embodiment of a reasonable fatty acid for use in an esterification with glycerol as claimed (Filippi, page 5, paragraph 0087).
Regarding claim 3, Kurth and Filippi together teach all the elements of the current invention as applied to claim 2. Kurth teaches a composition resulting from the esterification of a pre-melt mixture (Kurth, page 25, paragraph 000108) comprising a fatty acid dimer in 30% by weight (Kurth, page 25, table 2, “1120-1”), which lies within the claimed range, and teaches a composition comprising a coconut fatty acid in 20% by weight (Kurth, page 25, table 2, “405 Lipo”), which lies with the claimed range of isosteric acid. As above, Kurth does not specifically teach the fatty acid is isosteric acid as claimed, but does teach non-limiting examples of such fatty acids include C18 fatty acids (Kurth, page 13, paragraph 00057). Filippi teaches a fatty acid (Filippi, page 5, paragraph 0087) which can be isostearic acid (i.e., a C18 fatty acid; Filippi, page 5, paragraph 0087). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Kurth to include the C18 fatty acid taught by Filippi, because Kurth teaches C18 fatty acids as a non-limiting example (Kurth, page 13, paragraph 00057), while Filippi teaches isostearic acid as a specific embodiment of a reasonable fatty acid for use in an esterification with glycerol as claimed (Filippi, page 5, paragraph 0087).
Regarding claim 4, Kurth and Filippi together teach all the elements of the current invention as applied to claim 3. Kurth teaches an acid value of less than 1.5 (Kurth, claim 19), which lies within the claimed range of less than 5.0.
Regarding claim 5, Kurth and Filippi together teach all the elements of the current invention as applied to claim 4. Kurth teaches an acid value of less than 1.5 (Kurth, claim 19), which overlaps the claimed range of 0.5-5. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I).
Regarding claim 6, Kurth and Filippi together teach all the elements of the current invention as applied to claim 5. Kurth teaches a composition having a drop point of 50.0°C (Kurth, page 27, table 6, “405-E”), which lies within the claimed range of 35-50°C.
Regarding claim 7, Kurth teaches a wax composition which is natural-oil based (Kurth, page 6, paragraph 00028) for use in personal care products (Kurth, page 2, paragraph 0009) comprising at least 40% by weight of soybean oil (Kurth, claim 12), which overlaps the claimed range of 20-40%, and teaches soybean oil is a natural oil which can be hydrogenated (Kurth, page 5, paragraph 00026). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I). Kurth further teaches a composition resulting from the esterification of a pre-melt mixture (Kurth, page 25, paragraph 000108) comprising a fatty acid dimer in 17% by weight, glycerin (i.e., glycerol) in 20% by weight, and a fatty acid in 52% by weight (Kurth, page 25, table 2, “405E”), which all lie within the claimed ranges, resulting in a product with an acid value of 1.5 or lower, which lies within the claimed range of less than 10. Kurth further teaches the natural oil derivative can be derived from combinations of methods known in the art including transesterification, esterification, and interesterification (Kurth, page 6, paragraph 00027). While Kurth does not specifically use the term “dehydration reactions” for the creation of ester bonds as claimed, as defined by the instant specification the term “esterification” means the creation of an ester bond including 1) the dehydration reaction of an alcohol with an acid; 2) transesterification; or 3) interesterification (specification, page 8, paragraph 0040). Therefore, the esterification taught by Kurth would be expected to include dehydration reactions as claimed.
Kurth does not specifically teach the fatty acid is a C8 to C22 fatty acid substituted with one or more C1-C3 alkyl substituents as claimed, but does teach non-limiting examples of such fatty acids include C18 fatty acids (Kurth, page 13, paragraph 00057). Filippi, however, teaches a cosmetic composition comprising a wax which can be a hydrogenated oil (Filippi, pages 8-9, paragraph 0163), a fatty acid dimer (Filippi, claim 4), and the ester product of glycerol and a fatty acid (Filippi, page 5, paragraph 0087) which can be isostearic acid (i.e., a C18 fatty acid substituted with one C1 alkyl substituent; Filippi, page 5, paragraph 0087). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Kurth to include the specific C18 fatty acid taught by Filippi, because Kurth teaches C18 fatty acids as a non-limiting example (Kurth, page 13, paragraph 00057), while Filippi teaches isostearic acid as a specific embodiment of a reasonable fatty acid for use in an esterification with glycerol as claimed (Filippi, page 5, paragraph 0087).
Regarding claim 8, Kurth and Filippi together teach all the elements of the current invention as applied to claim 7. As above, Kurth does not specifically teach the fatty acid is a C8 to C22 fatty acid substituted with one or more C1-C3 alkyl substituents as claimed, but does teach non-limiting examples of such fatty acids include C18 fatty acids (Kurth, page 13, paragraph 00057). Filippi teaches a fatty acid (Filippi, page 5, paragraph 0087) which can be isostearic acid (i.e., a C18 fatty acid substituted with one C1 alkyl substituent; Filippi, page 5, paragraph 0087). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Kurth to include the specific C18 fatty acid taught by Filippi, because Kurth teaches C18 fatty acids as a non-limiting example (Kurth, page 13, paragraph 00057), while Filippi teaches isostearic acid as a specific embodiment of a reasonable fatty acid for use in an esterification with glycerol as claimed (Filippi, page 5, paragraph 0087).
Regarding claim 9, Kurth and Filippi together teach all the elements of the current invention as applied to claim 8. Kurth teaches a composition resulting from the esterification of a pre-melt mixture (Kurth, page 25, paragraph 000108) comprising a fatty acid dimer in 30% by weight (Kurth, page 25, table 2, “1120-1”), which lies within the claimed range, and teaches a composition comprising a coconut fatty acid in 20% by weight (Kurth, page 25, table 2, “405 Lipo”), which lies with the claimed range of isosteric acid. As above, Kurth does not specifically teach the fatty acid is isosteric acid as claimed, but does teach non-limiting examples of such fatty acids include C18 fatty acids (Kurth, page 13, paragraph 00057). Filippi teaches a fatty acid (Filippi, page 5, paragraph 0087) which can be isostearic acid (i.e., a C18 fatty acid; Filippi, page 5, paragraph 0087). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the composition of Kurth to include the C18 fatty acid taught by Filippi, because Kurth teaches C18 fatty acids as a non-limiting example (Kurth, page 13, paragraph 00057), while Filippi teaches isostearic acid as a specific embodiment of a reasonable fatty acid for use in an esterification with glycerol as claimed (Filippi, page 5, paragraph 0087).
Regarding claim 10, Kurth and Filippi together teach all the elements of the current invention as applied to claim 9. Kurth teaches an acid value of less than 1.5 (Kurth, claim 19), which lies within the claimed range of less than 5.
Regarding claim 11, Kurth and Filippi together teach all the elements of the current invention as applied to claim 10. Kurth teaches an acid value of less than 1.5 (Kurth, claim 19), which overlaps the claimed range, which as discussed above was interpreted by the Examiner to be 0.5-5. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP §2144.05(I).
Regarding claim 12, Kurth and Filippi together teach all the elements of the current invention as applied to claim 7. Kurth teaches a composition can be for use in personal care products (Kurth, page 2, paragraph 0009), but does not specify a personal care product from the claimed list. Filippi, however, teaches a composition with the same ingredients as a cosmetic composition (Filippi, abstract). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the personal care composition of Kurth in a cosmetic as taught by Filippi, because cosmetics are personal care compositions, and Filippi teaches a composition with the same ingredients to be useful as a cosmetic.
Conclusion
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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/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613