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Claims 12-16 are withdrawn.
Claims 1-11 are pending and represent all claims currently under consideration.
Priority
This application is a 371 of PCT/US2022/070041, which claims priority to PRO 63/156,563 and PRO 63/134,015.
Claims 1-11 are considered to have an effective filing date of 01/05/2021.
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 11/11/2025 is acknowledged. The traversal is on the ground(s) that Kurth teaches a natural oil-based wax composition which is different from a petrolatum composition. Applicant states that an objective of Kurth is to mimic beeswax, whereas an objective and advantage of the present invention is to mimic petrolatum, and further that beeswax and petrolatum are compositions with different properties and uses, citing beeswax as being used to make candles and the like, while petrolatum is used in skin lotions and cosmetics (Remarks, pages 6-7). This argument is not persuasive, because Kurth teaches an oil-based wax composition as an alternative for other products such as beeswax and paraffin wax, a byproduct of petroleum refining (Kurth, page 1, paragraphs 0003-0005). As stated in the instant specification, the instant invention is an oil-based composition as an alternative for petrolatum (specification, page 2, paragraphs 0006-0007), also a byproduct of petroleum refining (page 1, paragraph 0003). In both cases, an advantage is an alternative to petroleum refined products, because as stated in the instant specification, petroleum refining could potentially result in contaminations (page 1, paragraph 0004). Further, the composition as currently claimed is not limited to one that mimics petrolatum as stated in the Remarks (page 7, 1st paragraph). Kurth teaches the composition as claimed, as stated in the rejection below, and teaches use in personal care applications (Kurth, abstract), suggesting the composition could be used in the same way and would be expected to display the same physical properties as the claimed invention.
Applicant further states that Kurth uses different ingredients in different proportions than the claimed invention (Remarks, page 7). This argument is not persuasive, because Kurth teaches a composition comprising each of the ingredients in ranges overlapping those claimed, as demonstrated in the rejection below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/11/2025.
Information Disclosure Statement
The information disclosure statements filed 06/30/2023 and 05/28/2025 have been considered.
Claim Objections
Claims 1, 8, and 11 are objected to because of the following informalities. Appropriate correction is required.
Regarding claim 1, “fatty acid” should read “a fatty acid”, and “total weight” should read “a total weight”.
Regarding claim 8, “two or more hydrogenated” should read “two or more of hydrogenated”.
Regarding claim 11, “25°C from about 20” should read “25°C of from about 20”, and “kinetic viscosity” should read “a kinetic viscosity”.
Specification
The use of the terms Radiacid, UNIDYME, Novozyme, and Lovibond, which are trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 1-3 and 9-11 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 1, the claim recites the limitation "the natural oil-based product". There is insufficient antecedent basis for this limitation in the claim. It is the Examiner’s interpretation that this limitation was intended to read "the natural oil-based composition”.
Regarding claims 2-3, it is unclear what is being claimed by “The natural oil-based of Claim 1”. It is the Examiner’s interpretation that this limitation was intended to read “The natural oil-based composition of Claim 1”.
Regarding claims 9-11, the claims recite the limitation "the natural oil-based petrolatum". There is insufficient antecedent basis for this limitation in the claim. It is the Examiner’s interpretation that this limitation was intended to read "the natural oil-based composition”.
Regarding claim 11, the parenthetical recitations of “Dmm” and “1/10 of mm” in renders the claims indefinite because it is unclear whether the limitations in parentheses are part of the claimed invention or describing an example or preference. See MPEP § 2173.05(d).
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kurth (WO 2019140375 A1; IDS reference, 06/30/2023).
Regarding claim 1, Kurth teaches a natural oil-based wax composition (Kurth, claim 14), which is the product of mixing a fatty acid dimer, glycerin, and an oil (i.e., a pre-esterification mixture as claimed) with an enzymatic catalyst to facilitate esterification and transesterification reactions (i.e., an esterification catalyst as claimed) until the mixture achieves an acid value of less than 1.5 (Kurth, claim 19), and defines acid value as the weight of KOH in mg needed to neutralize the acids present in 1 g of test sample (Kurth, page 16, paragraph 00067). Kurth further teaches the oil can be natural and hydrogenated (Kurth, page 6, paragraph 00026). Kurth teaches that the reaction mixture typically comprises about 20-30 wt% glycerin, about 15-30 wt% dimer, and that the remaining balance (i.e., 40-65 wt%) can be oil (Kurth, page 23, paragraph 000130), which overlaps the claimed ranges of each. 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 does not specifically state ester bonds are formed through dehydration reactions as claimed. However, Kurth teaches natural oil derivatives can be derived using any one or combination of methods known in the art, such as esterification, transesterification, and interesterification (Kurth, page 6, paragraph 00027), and 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, the reaction of an alcohol with an ester to form a new ester; or 3) interesterification, the rearrangement of fatty acids (specification, page 8, paragraph 0040). Therefore, the esterification taught by Kurth would be expected to include dehydration reactions as claimed.
Kurth is considered to be analogous to the claimed invention, because both Kurth and the instant invention are in the same field of natural oil-based 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 arrived at the claimed invention based on the teachings of Kurth under the meaning of 35 U.S.C. 103.
Regarding claim 2, Kurth teaches all the elements of the current invention as applied to claim 1. As above, Kurth teaches an acid value of less than 1.5 (Kurth, claim 19), and defines acid value as the weight of KOH in mg needed to neutralize the acids present in 1 g of test sample (Kurth, page 16, paragraph 00067).
Regarding claim 3, Kurth teaches all the elements of the current invention as applied to claim 1. As above, Kurth teaches an acid value of less than 1.5 (Kurth, claim 19), and defines acid value as the weight of KOH in mg needed to neutralize the acids present in 1 g of test sample (Kurth, page 16, paragraph 00067), which overlaps the claimed range. 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 4, Kurth teaches all the elements of the current invention as applied to claim 1. Kurth exemplifies a composition comprising 18 wt% of a fatty acid dimer (Kurth, page 25, table 2, formulation 607-1), which lies within the claimed range.
Regarding claim 5, Kurth teaches all the elements of the current invention as applied to claim 1. Kurth exemplifies a composition comprising 20 wt% of glycerin (Kurth, page 25, table 2, formulation 405D), which lies within the claimed range.
Regarding claim 6, Kurth teaches all the elements of the current invention as applied to claim 1. As above, Kurth teaches the oil can be natural and hydrogenated (Kurth, page 6, paragraph 00026), and that the reaction mixture typically comprises about 20-30 wt% glycerin, about 15-30 wt% dimer, and that the remaining balance (i.e., 40-65 wt%) can be oil (Kurth, page 23, paragraph 000130), which encompasses the claimed range. 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 7, Kurth teaches all the elements of the current invention as applied to claim 1. As above, Kurth teaches the oil can be natural and hydrogenated (Kurth, page 6, paragraph 00026). Kurth exemplifies a composition comprising a hydrogenated soy oil (Kurth, page 25, table 2, formulation 607-1).
Regarding claim 8, Kurth teaches all the elements of the current invention as applied to claim 1. Kurth teaches the oil can be a soybean oil, palm oil, canola oil, coconut oil, or mixture thereof, which can be natural and hydrogenated (Kurth, page 6, paragraph 00026).
Regarding claim 9, Kurth teaches all the elements of the current invention as applied to claim 1. As defined by the instant specification, the iodine value is a mass of iodine in grams that is consumed by 100 grams of a chemical substance corresponding to the amount of unsaturation (specification, page 10, paragraph 0052). Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Because Kurth teaches the composition as claimed, it would be expected that the composition would have the iodine value as claimed.
Regarding claim 10, Kurth teaches all the elements of the current invention as applied to claim 1. As defined by the instant specification, the polydispersity index is a ratio of weight average molecular weight to number average molecular weight (specification, page 9, paragraph 0047). Products of identical chemical composition cannot have mutually exclusive properties. See MPEP § 2112.01(II). Because Kurth teaches the composition as claimed, it would be expected that the composition would have the polydispersity index as claimed.
Regarding claim 11, Kurth teaches all the elements of the current invention as applied to claim 1. Kurth teaches the composition has a drop point ranging from about 50-60°C (i.e., a rheological property from the claimed list; Kurth, page 19, paragraph 00084), which lies within the claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHASITY P JANOSKO whose telephone number is (703)756-5307. The examiner can normally be reached 7:30-3:30 ET.
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/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613