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 .
Election/Restrictions
Applicant’s election with traverse of Group I, claims 1-7, 18 and 19, in reply filed on 09/30/2025 is acknowledged. Applicant further elected ethylene glycol diglycidyl ether of instant claim 3 as the species of crosslinking agent.
Claims 8-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 09/30/2025.
The traversal is on the ground(s) that the claims are related as a product and a process specially adapted for the manufacture of the product. This is not found persuasive because as stated in the restriction/election requirement, Groups I and II lack unity of invention because the shared technical feature of these groups does not make a contribution over the prior art, as discussed in the restriction requirement 07/31/2025 and in this office action. Therefore, even though the groups share the technical feature of a formulation comprising greater than or equal to 20% w/w of a polymer comprising glutamic acid and a crosslinking agent bearing two glycidyl groups, they do not share a special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112 – Indefiniteness
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 18 and 19 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 18 recites the limitation "said composition as defined in claim 1" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "said composition as defined in claim 1" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 101 and 112(a)
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 following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 18 is not supported by a credible asserted utility or well-established utility because it is a “use” claim. Use claims recite a use but fail to recite steps, and they do not claim a process machine, manufacture or composition. Use claims do not have utility because one of ordinary skill in the art would not appreciate the scope of the claim or the steps required to achieve the use disclosed by the claim. Therefore, the invention of claim 18 are not supported by either a credible asserted utility or a well-established utility and do not comply with 35 USC § 101.
Claim 18 is also rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. Specifically, because the claimed invention is not supported by either a credible asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention.
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.
1) Claims 1-6, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Minty et al. (WO 2018222545 A1, publication date 12/06/2018; cited in IDS 06/30/2023) in view of Harrington et al. (US 2005/0143506 A1, publication date 06/30/2005).
Minty discloses a rheology modifier comprising cross-linked poly(amino acid) [abstract]. In one example of the compositions, sodium D,L-gamma-poly(glutamate) (i.e., instant claim 4) and the cross-linking agent ethylene glycol diglycidyl ether (i.e., instant claim 3) are reacted in an aqueous solution [0048]. According to Minty, the cross-linked particles may be added to water-in-oil emulsions [0025]. Additionally, according to Minty the poly(amino acid) may have an average molecular weight between 1000 and 30,000,000 Daltons [0011]. Min
Minty does not discloses the instantly claimed weight percent of the crosslinked poly(glutamic acid) polymer in composition.
Harrington discloses a inverting invers emulsions for water compatible polymer products [abstract]. Harrington discloses that “inverse, or water-in-oil, polymerization is utilized on a commercial scale to prepare high molecular weight water-compatible polymers” [0005]. According to Harrington “[t]he advantages of this process include the ability to prepare high molecular weight, water-compatible polymer in a low viscosity, high solids form. This process produces emulsions that are 20-50% polymer, exhibit low
viscosity, and the polymer can have a molecular weight in the tens of millions” [0006]. Additionally, Harrington discloses that emulsions with high concentrations are less costly to ship that low product solids of other methods [0006]. Furthermore, Harrington discloses that inverting the water-in-oil emulsion comprising high amounts of polymer “results in a continuous aqueous (water) phase where the coalescence of the previously dispersed aqueous phase results in the dispersal of the polymer in solution, resulting in a viscosification of the solution” [0008].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the water-in-oil emulsion comprising cross-linked D,L-gamma-poly(glutamate) of Minty, at the polymer concentrations disclosed by Harrington. One would have recognized that the polymer concentrations of Harrington reduce shipping costs compared to low solid solutions, as disclosed by Harrington. One would have had an expectation of success because Minty discloses the cross-linked D,L-gamma-poly(glutamate) may be formulated in water-in-oil emulsions. Furthermore, Harrington teaches that water-in-oil emulsions comprising 20-50% high molecular weight polymers are suitable for subsequent dilution and viscosity control. Additionally, in combining these elements, by known methods, one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately (i.e., polymer of Minty as a thickening agent and the inverting water-in-oil emulsion of Harrington as inverting thickening emulsion). See MPEP 2143, Exemplary Rationale A.
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). In the present case, the instantly claimed ranges for amount of polymer present in composition (at least 20% w/w and 20-60%w/w; instant claims 1 and 2) overlaps with the range of the prior art (20-50%) and so a prima facie case of obviousness exists.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising a polymer consisting of an at least partially salified gamma glutamic acid and units derived from ethylene glycol diglycidyl ether. Where the polymer is present within the instantly claimed amounts. Since the prior art composition contains substantially the same components, i.e., glutamic acid cross linked with a crosslinker bearing at least two glycidyl groups, in the same relative proportions as instantly claimed, it would be expected to inherently possess the same chemical and physical properties, such as a viscosity as define by instant claim 6.
Regarding instant claim 5, Minty discloses “[t]he linear amino acid polymers are cross-linked to one another through a covalent bond between carboxylic acid side groups, at a ratio ranging from 1 cross-link bond per 10 amino acid monomer units to 1 cross-link bond per about 100,000 amino acid monomer units” (i.e., about 10-0.001mol% crosslinker).
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). In the present case, the instantly claimed range of the crosslinker in the polymer (0.5-20mol% of the polymer) overlaps with the range taught by the prior art (0.001-10mol%) and so a prima facie case of obviousness exists.
Regarding instant claims 18 and 19, Minty discloses the rheology modifying crosslinked polymer may be used for cosmetic formulations [0044]. In one example, Minty discloses cosmetic compositions comprising 4 grams of D,L- y -poly(glutamate) cross-linked with the ethylene glycol diglycidyl ether and with a total weight of 1154.46 gram, i.e., about 0.35% w/w of D,L- y -poly(glutamate) cross-linked with the ethylene glycol diglycidyl ether (see pages 18-19 of [0056]).
The examiner in interpreting instant claims 18, which only recites a use, as a composition claim.
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a cosmetic composition comprising the cross linked poly(glutamate) particles of the Minty in amounts taught by Minty. See MPEP 2144.07.
On of ordinary skill in the art would have understood that about 0.7% to about 1.75% of the composition taught by Minty and Harrington would be required to achieve the appropriate amount (about 0.35% w/w) of cross linked poly(glutamate) in a cosmetic composition, as desired by Minty. 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). In the present case, the instantly claimed range of composition comprising crosslinked glutamic acid in a cosmetic composition (0.1-10%w/w) overlaps with the range of the prior art (0.7-1.75% w/w) and so a prima facie case of obviousness exists.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising the inverse emulsion of crosslinked glutamic acid taught by Minty and Harrington, wherein the inverse emulsion is present within the instantly claimed amounts.
2) Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Minty et al. (WO 2018222545 A1, publication date 12/06/2018; cited in IDS 06/30/2023) in view of Harrington et al. (US 2005/014.3506 A1, publication date 06/30/2005) as applied to claims 1-6, 18 and 19 above, and further in view of Landoll (US 4304902, date of patent 12/08/1981).
Minty and Harrington, which are taught above, differ from the instant claim 7 insofar as they do not teach a monomer unit further comprising an alkyl epoxide. However, Minty discloses the poly(amino acid) may further comprise additives to enhance the performance or ease of use [0043]. Minty further discloses suitable additives as molecular species which are crosslinked with the poly(amino acid) to alter material properties and surfactants to enhance dispersion [0043].
Landoll discloses copolymer of ethylene oxide and epoxy-n-alkanes of 12-25 carbon atoms [abstract]. Landoll further discloses copolymers of epoxide monomers are well known [col. 1, lines 20-21]. Landoll further teaches copolymers of epoxy-n-alkanes as having an increased viscosity and viscosity stability [col. 1, lines 36].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have combined the 12-25 carbon epoxy-n-alkanes of Landoll and the crosslinked poly(amino acid) of Minty. One would have been motivated to make this combination for the viscosity and viscosity benefits disclosed by Landoll. One would have had an expectation of success because Minty discloses additional components may be crosslinked the poly(amino acid) to alter material properties. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to formulated the composition taught be Minty and Harrington wherein the composition also comprises a monomer unit according to instant claim 7.
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.
1) Claims 1-7, 18 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9-18 of copending Application No. 18/256,869 in view of Harrington et al. (US 2005/014.3506 A1, publication date 06/30/2005) and Landoll (US 4304902, date of patent 12/08/1981).
The copending claims teaches a thickening agent which is a polymer comprising partially or totally salified polyglutamic acid and a crosslinking agent comprising at least two glycidyl functions [claim 1].
The copending claims do not discloses an emulsion comprising at least 20% of the thickening polymer.
Harrington discloses a inverting invers emulsions for water compatible polymer products [abstract]. Harrington discloses that “inverse, or water-in-oil, polymerization is utilized on a commercial Scale to prepare high molecular weight water-compatible polymers” [0005]. According to Harrington “[t]he advantages of this process include the ability to prepare high molecular weight, water-compatible polymer in a low viscosity, high solids form. This process produces emulsions that are 20-50% polymer, exhibit low
viscosity, and the polymer can have a molecular weight in the tens of millions” [0006]. Additionally, Harrington discloses that emulsions with high concentrations are less costly to ship that low product solids of other methods [0006]. Furthermore, Harrington discloses that inverting the water-in-oil emulsion comprising high amounts of polymer “results in a continuous aqueous (water) phase where the coalescence of the previously dispersed aqueous phase results in the dispersal of the polymer in solution, resulting in a viscosification of the solution” [0008].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the thickening polymer of the copending claims as an inverse emulsion and at the polymer concentrations disclosed by Harrington. One would have had an expectation of success because Harrington teaches that water-in-oil emulsions comprising 20-50% high molecular weight polymers are suitable for subsequent dilution and viscosity control. Additionally, in combining these elements, by known methods, one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
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). In the present case, the instantly claimed ranges for amount of polymer present in composition (at least 20% w/w and 20-60%w/w; instant claims 1 and 2) overlaps with the range of the prior art (20-50%) and so a prima facie case of obviousness exists.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising a polymer consisting of an at least partially salified gamma glutamic acid and units derived from ethylene glycol diglycidyl ether. Wherein the polymer is present within the instantly claimed amounts.
Additionally, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). In the present case it would have been obvious to one of ordinary skill in the art, at the time of filling, to have optimized the amounts of thickening polymer in composition to adjust the rheology properties.
This is a provisional nonstatutory double patenting rejection.
2) Claims 1-7, 18 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/256,562 in view of Harrington et al. (US 2005/0143506 A1, publication date 06/30/2005) and Landoll (US 4304902, date of patent 12/08/1981).
The copending claims teach a thickening polymer comprising monomers of partially or totally salified glutamic acid and monomers of at least on crosslinking gent bearing at least two glycidyl functions [claim 1].
The copending claims do not discloses an emulsion comprising at least 20% of the thickening polymer.
Harrington discloses a inverting invers emulsions for water compatible polymer products [abstract]. Harrington discloses that “inverse, or water-in-oil, polymerization is utilized on a commercial Scale to prepare high molecular weight water-compatible polymers” [0005]. According to Harrington “[t]he advantages of this process include the ability to prepare high molecular weight, water-compatible polymer in a low viscosity, high solids form. This process produces emulsions that are 20-50% polymer, exhibit low
viscosity, and the polymer can have a molecular weight in the tens of millions” [0006]. Additionally, Harrington discloses that emulsions with high concentrations are less costly to ship that low product solids of other methods [0006]. Furthermore, Harrington discloses that inverting the water-in-oil emulsion comprising high amounts of polymer “results in a continuous aqueous (water) phase where the coalescence of the previously dispersed aqueous phase results in the dispersal of the polymer in solution, resulting in a viscosification of the solution” [0008].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the thickening polymer of the copending claims as an inverse emulsion and at the polymer concentrations disclosed by Harrington. One would have had an expectation of success because Harrington teaches that water-in-oil emulsions comprising 20-50% high molecular weight polymers are suitable for subsequent dilution and viscosity control. Additionally, in combining these elements, by known methods, one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
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). In the present case, the instantly claimed ranges for amount of polymer present in composition (at least 20% w/w and 20-60%w/w; instant claims 1 and 2) overlaps with the range of the prior art (20-50%) and so a prima facie case of obviousness exists.
Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated a composition comprising a polymer consisting of an at least partially salified gamma glutamic acid and units derived from ethylene glycol diglycidyl ether. Wherein the polymer is present within the instantly claimed amounts.
Additionally, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). In the present case it would have been obvious to one of ordinary skill in the art, at the time of filling, to have optimized the amounts of thickening polymer in composition to adjust the rheology properties.
This is a provisional nonstatutory double patenting rejection.
3) Claims 1-7, 18 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/256,553 in view of Harrington et al. (US 2005/014.3506 A1, publication date 06/30/2005) and Landoll (US 4304902, date of patent 12/08/1981).
The copending claims disclose a polymer comprising monomer units derived from partially or totally salified glutamic acid (GA), and monomer units of at least one crosslinking agent (XLA) bearing at least two glycidyl functions [claim 1].
The copending claims do not discloses an emulsion comprising at least 20% of the thickening polymer.
Harrington discloses a inverting invers emulsions for water compatible polymer products [abstract]. Harrington discloses that “inverse, or water-in-oil, polymerization is utilized on a commercial Scale to prepare high molecular weight water-compatible polymers” [0005]. According to Harrington “[t]he advantages of this process include the ability to prepare high molecular weight, water-compatible polymer in a low viscosity, high solids form. This process produces emulsions that are 20-50% polymer, exhibit low
viscosity, and the polymer can have a molecular weight in the tens of millions” [0006]. Additionally, Harrington discloses that emulsions with high concentrations are less costly to ship that low product solids of other methods [0006]. Furthermore, Harrington discloses that inverting the water-in-oil emulsion comprising high amounts of polymer “results in a continuous aqueous (water) phase where the coalescence of the previously dispersed aqueous phase results in the dispersal of the polymer in solution, resulting in a viscosification of the solution” [0008].
It would have been obvious to one of ordinary skill in the art, at the time of filling, to have formulated the thickening polymer of the copending claims as an inverse emulsion and at the polymer concentrations disclosed by Harrington. One would have had an expectation of success because Harrington teaches that water-in-oil emulsions comprising 20-50% high molecular weight polymers are suitable for subsequent dilution and viscosity control. Additionally, in combining these elements, by known methods, one would have expected nothing more than predictable results because, when combined, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Additionally, "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). In the present case it would have been obvious to one of ordinary skill in the art, at the time of filling, to have optimized the amounts of thickening polymer in composition to adjust the rheology properties.
This is a provisional nonstatutory double patenting rejection.
4) Claim 1-7, 18 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3, 5-12, and 14-18 of copending Application No. 18/260,300 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both teach a self-invertible water-in-oil type emulsion comprising, per 100% of its mass, a content by mass of greater than or equal to 20% and less than or equal to 60% of a polymer consisting of monomer units derived from partially or totally salified glutamic acid and of units derived from at least one crosslinking agent bearing at least two glycidyl functions [claim 1]. The copending claims also disclose a composition comprising 0.1-10% w/w of the water-in-oil emulsion [claim 7].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
5) Claim 1-7, 18 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-19 of copending Application No. 18/260,175 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both teach a self-invertible water-in-oil type emulsion comprising, per 100% of its mass, a content by mass of greater than or equal to 20% of a polymer consisting of monomer units derived from partially or totally salified glutamic acid and of units derived from at least one crosslinking agent bearing at least two glycidyl functions [claim 1]. The copending claims also disclose the composition may be used to thicken, emulsify or stabilize a composition for topical use [claim 19].
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). In the present case it would have been obvious to one of ordinary skill in the art, at the time of filling, to have optimized the amounts of thickening polymer in composition to adjust the rheology properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/C.T.W./ Examiner, Art Unit 1612
/WALTER E WEBB/ Primary Examiner, Art Unit 1612