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 .
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.
Claim Status
Applicant’s preliminary amendment of 06/07/2023 is acknowledged. Claims 1-8 and 10-15 are amended, and claim 9 is cancelled. Claims 1-8 and 10-15 are currently pending and are examined on the merits herein.
Priority
The instant application is a 371 of PCT/EP2021/083803 filed on 12/01/2021 and claims foreign priority to PCT/CN2020/134952 filed on 12/09/2020 and EP21150458.4 filed on 01/07/2021 as reflected in the filing receipt dated on 10/23/2023. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 06/07/2023, 08/03/2023, and 12/03/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements have been considered by the examiner.
Regarding the IDS filed 08/03/2023, because no English translation was provided for foreign patent documents DE-19712033-A1, EP-0693471-B1, EP-0694521-B1, and EP-0818450-A1, these documents have not been considered by the Examiner.
Claim Objections
Claims 1-8 objected to because of the following informalities:
Claim 1 recites an extraneous space between the terms “1.5” and “%” in line 4 and between “3.5” and “%” in line 6 which should be removed.
Claims 1-3 recite a hydrocarbon mixture comprising “C11/C12” and “C14 to C17”. It appears that these terms refer to hydrocarbons, given that they are present in an amount “based on the sum of the hydrocarbons in the hydrocarbon mixture” and as is consistent with Applicant’s instant specification (Page 24, Paragraph 5). For clarity, provided that the open claim language “comprising” allows for the inclusion of other unrecited elements which may not be hydrocarbons, the terms should read “C11/12 hydrocarbons” and “C14 to C17 hydrocarbons”.
Claims 1-3 recite the hyphenated limitation “C-13” while other recited hydrocarbons are unhyphenated. For example, “C14”. For consistency, all hydrocarbons should be recited in the same manner, either all hyphenated (e.g. “C-13”, “C-14”, etc.) or all unhyphenated (e.g. “C13”, “C14”, etc.).
Claim 2 recites an extraneous space between the terms “99.5” and “%” in line 2, between “1.0” and “%” in line 4, and between “3.0” and “%” in line 6 which should be removed.
Claims 2 and 3 each recite a “wherein” clause in line 4 that is not preceded by a comma. To properly separate limitations within the claims, the claims should read “The hydrocarbon mixture…based on the sum of the hydrocarbons, wherein the amount…”.
Claim 3 recites an extraneous space between the terms “97” and “%” in line 2, between “0.5” and “%” in line 4, and between “2.5” and “%” in line 6 which should be removed.
Claim 4 recites an extraneous space between the terms “1” and “%” in line 3 which should be removed.
Claim 5 recites an extraneous space between the terms “1” and “%” in line 3 which should be removed.
Claim 6 recites an extraneous space between the terms “1” and “%” in line 3 which should be removed.
Claim 7 recites an extraneous space between the terms “0.5” and “%” in line 3 which should be removed.
Claims 7 and 8 each recite the term “claimed 1” in line 2 and should read “claim 1”.
Appropriate correction is required.
Specification
The disclosure is objected to because of the following informalities:
Pages 41-45 refer to “Figure 1”, “Figure 2”, etc. but should refer to “FIG. 1”, “FIG. 2”, etc. as labeled in the Drawings.
Appropriate correction is required.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “figure 1a, 2a”; “figure 1b, 2b”; “figures 2a, 2b”; etc. (Page 41 of Instant Specification).
The drawings are further objected to because:
“FIG.1”, “FIG.2”, “FIG.3”, “FIG.4”, and “FIG.5” are each missing a space between the term “FIG.” and the corresponding figure number. The labels should read “FIG. 1”, “FIG. 2”, etc.
Regarding FIG. 1, arrows obstruct the text “2,3”, “1”, and “3” on the right side of the figure, making the text difficult to read.
Regarding FIG. 2, an arrow obstructs the text “1” on the right side of the figure, making the text difficult to read.
Regarding Figure 6, 37 CFR 1.84(u)(1) (see MPEP 507(e)) states: View numbers must be preceded by the abbreviation “FIG.” Here, the drawing refers to “Figure 6” and should read “FIG. 6”.
Further, each comma within the values displayed on Figure 6 should be replaced with a decimal. For example, the values should respectively read “90.6%” and “9.1%” rather than “90,6%” and “9,1%”.
The Examiner notes that changes in the drawings must be reflected in Applicant’s instant specification.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112(b)
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 1-8 and 10-15 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.
Claim 1 recites the limitation “wherein an amount of C11/C12…and an amount of C14 to C17…” beginning in line 4. There is insufficient antecedent basis for this limitation in the claim. A “wherein” clause refers back to something previously recited in a claim or parent claim; however, neither C11/C12 nor C14 to C17 was previously recited in the claim. Because the claimed hydrocarbon mixture was not defined to include C11/C12 and/or C14 to C17, it is unclear how their amounts can be further limited. Thus, the scope of the claim is indefinite.
Claims 2-8 and 10-15 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question.
Claims 1-3 each recite the limitation “amount of C11/C12” in line 4. The use of a forward slash between “C11” and “C12” makes it unclear whether the claim requires that both C11 and C12 hydrocarbons be present in the recited amount, or whether only one of the two types is required. Therefore, the metes and bounds of the claim are indefinite. In the interest of compact prosecution, the Examiner is interpreting the limitation “amount of C11/12” to mean the total amount of hydrocarbons having 11 or 12 carbons, which does not require the presence of both C11 and C12 hydrocarbons.
Claims 2-8 and 10-15 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question.
Claims 1 and 4-8 each recite at least one instance of the limitation(s) “a sum” and/or “an amount”. The use of the article “a” or “an” when referring to, for example, the sum of the hydrocarbons in the hydrocarbon mixture makes it unclear whether (1) more than one sum of hydrocarbons is present within the mixture (e.g., “a” sum could be referring to the sum of C13 and C11/12 hydrocarbons only) or (2) only one sum of hydrocarbons is present within the mixture (e.g., the sum of all hydrocarbons present in the mixture). If the intended interpretation is the latter, which the Examiner is using for the purposes of compact prosecution in the prior art rejections below, the Examiner recommends amending the claims to recite, for example, “based on the sum of the hydrocarbons in the hydrocarbon mixture”. The same reasoning applies to recitations of the limitation “an amount”.
Claims 2-8 and 10-15 are rejected by virtue of their dependency on claim 1, as they fail to resolve the ambiguity in question.
Claim 12 recites the limitation “cosmetic formulation…comprising at least one perfume, perfume oil, or fragrance”. The limitation lacks sufficient antecedent basis because the claim depends from claim 11, which does not recite the listed components. The term “further” should be added to the claim so as to properly further limit claim 11. The Examiner recommends amending the claim to read “cosmetic formulation…further comprising…”.
Claims 12 and 13 each recite the terms “perfume(s)”, “perfume oil(s)”, and “fragrance(s)”. Because no limiting definition is provided for the terms in Applicant’s instant disclosure, the terms are interpreted according to the plain meaning given to the terms by those of ordinary skill in the art at the time. Note: MPEP 2173.01. It is art-recognized that perfumes comprise varying concentrations of perfume oils, which ultimately comprise fragrances, as evidenced by Burton (Beautylish, p. 2; published: 07/13/2014; PTO-892). Because the claims recite the broad recitation fragrance(s), along with the narrower recitations perfume(s) and perfume oil(s), which are specific embodiments of fragrances, the claims 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. See MPEP § 2173.05(c). Following the same logic, the claims are further indefinite because perfumes are specific embodiments of perfume oils.
Claim 14 recites the limitation “cosmetic formulation…comprising at least one ingredient selected from…”. The limitation lacks sufficient antecedent basis because the claim depends from claim 11, which does not recite the listed components. The term “further” should be added to the claim so as to properly further limit claim 11. The Examiner recommends amending the claim to read “cosmetic formulation…further comprising…”.
Claim Interpretation
The Examiner is interpreting the limitation “amount of C14 to C17” to mean the total amount of hydrocarbons having 14, 15, 16, or 17 carbons, which not require the presence of each of C14 to C17 hydrocarbons.
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.
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 1-8 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Dierker et al. (US20100189665A1; published: 07/29/2010; effectively filed: 06/12/2008; PTO-892) in view of Arnaud et al. (FR2965476A1; published: 04/06/2012; IDS of 06/07/2023).
Dierker teaches cosmetic and/or pharmaceutical formulations comprising 0.1 to 80% by weight of at least one saturated linear hydrocarbon selected from the group consisting of C9, C11, C13, C15, C17, C19, C21 and C23 hydrocarbons (Claims 1-4). Dierker specifies that the formulation preferably contains more than 95% by weight of C9, C11, C13, C15, C17, C19, C21 and C23 hydrocarbons based on the sum of the hydrocarbons present in the formulation (Paragraph 0017).
Regarding the hydrocarbon mixture recited in claims 1-3: Dierker further teaches the preparation of pure and deodorized tridecane (Paragraphs 0173-0274), which is a saturated linear C13 hydrocarbon. One of ordinary skill in the art before the effective filing date of the claimed invention could at once envisage an embodiment wherein the sum of the hydrocarbons present in the formulation of Dierker comprises more than 95% by weight of tridecane, which lies within the range recited in instant claim 1 and substantially overlaps the ranges recited in instant claims 2 and 3, thus rendering the ranges obvious.
Dierker does not expressly teach an embodiment wherein the sum of the hydrocarbons further comprises the amount of C11/C12 and C14 to C17 hydrocarbons recited in instant claims 1-3. As such, the reference does not explicitly teach all limitations of claims 4-8 and 10-15, which ultimately depend from claim 1.
Arnaud teaches that volatile linear alkane mixtures comprising n-undecane (C11), n-dodecane (C12), n-tridecane (C13), and n-tetradecane (C14) are particularly useful in facilitating the manufacture of cosmetic products, as they allow simple mixing with other ingredients to obtain better dispersed raw materials, which leads to improved cosmetic performance, and they serve as an advantageous alternative to silicone solvents and petrochemical solvents (Pages 1-3, Description).
Regarding the amount of C11/C12 and C14 to C17 hydrocarbons recited in claims 1-3: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the hydrocarbons in the formulation of Dierker by further including undecane, dodecane, and tetradecane because the combination of these linear alkanes with tridecane is known in the art to facilitate the manufacture of cosmetic products by improving the dispersion of raw materials within the products. Because tridecane is already present in an amount of more than 95% by weight based on the sum of the hydrocarbons, the amount of undecane/dodecane and the amount of tetradecane is necessarily less than 5% by weight based on the sum of the hydrocarbons, which overlaps and thus renders obvious the claimed ranges.
It is generally noted that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Given that Applicant did not point out the criticality of the specific hydrocarbon concentrations of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum concentration. Note: MPEP 2144.05.
Regarding claims 4-6: The tridecane of Dierker is synthesized and purified using an identical method to that disclosed in Applicant’s instant specification (Instant Specification, Page 41, Preparation example 1). Arnaud explicitly teaches that its mixtures of alkanes contain less than 1% by weight of aromatic hydrocarbons and less than 0.1% by weight of unsaturated hydrocarbons (Page 3). Therefore, the hydrocarbon mixture taught by the combination of Dierker and Arnaud necessarily comprises aromatic hydrocarbons, unsaturated hydrocarbons, and tetradecanol within the instantly claimed ranges.
Regarding claims 7-8: The hydrocarbon mixture taught by the combination of Dierker and Arnaud does not comprise hydrocarbons having a carbon chain length greater than or equal to 17, or hydrocarbons having a carbon chain length less than or equal to 10, and therefore meets the limitations wherein the sum of said hydrocarbons is less than or equal to 0.5% by weight based on the sum of the hydrocarbons.
Regarding claims 10-11: While the Examiner notes that “decorative or sun care cosmetic” is merely an intended use of the instantly claimed composition, Dierker further teaches that its compositions may be used in cosmetic formulations for sun protection and in decorative cosmetic formulations (Paragraphs 0022-0023). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the hydrocarbon mixture taught by the combination of Dierker and Arnaud into a sun protection or decorative cosmetic formulation such that the total amount of undecane and tridecane comprises between 0.1% to 80% by weight of the formulation because Dierker teaches that this amount of C11 and C13 hydrocarbons is particularly useful for producing cosmetic formulations with improved sensory properties, better skin compatibility, and good dispersibility of pigments (Paragraphs 0003-0005). Thus, the total amount of hydrocarbon mixture—including undecane, dodecane, tridecane, and tetradecane—in the cosmetic formulation would substantially overlap and thus render obvious the instantly claimed range, given that undecane and tridecane comprise more than 95% by weight based on the sum of hydrocarbons in the hydrocarbon mixture.
Regarding claims 12-13: The formulation taught by the combination of Dierker and Arnaud does not comprise perfumes, perfume oils, and fragrances and, therefore, reads on claim 13. Alternatively, Dierker teaches embodiments wherein the formulation further comprises at least one biogenic active ingredient, insect repellent, tyrosinase inhibitor, preservative, perfume oil, stabilizer and/or hydrotropes (Paragraphs 0164). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the formulation taught by the combination of Dierker and Arnaud by further including at least one perfume oil to achieve a desired odor or fragrance (Paragraph 0170).
Regarding claim 14: Dierker teaches embodiments wherein the formulation further comprises at least one UV light protection filter and/or at least one pigment and/or dye (Claims 6 and 8). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the formulation taught by the combination of Dierker and Arnaud by further including at least one UV light protection filter and/or pigment and/or dye to absorb ultraviolet rays and/or achieve a desired formulation color (Paragraphs 0038-0065).
Regarding claim 15: Arnaud further teaches that linear volatile alkanes can be combined with a gelling agent such as a lipophilic clay in order to gel the oily phase of the cosmetic product and thus improve its stability (Page 4). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the formulation taught by the combination of Dierker and Arnaud by further including a gelling agent in order to improve the product’s stability.
An ordinarily skilled artisan would reasonably expect success in modifying Dierker with the teachings of Arnaud as proposed because the combination of undecane, dodecane, tridecane, and tetradecane is known in the prior art to be useful in dispersing cosmetic ingredients. While Dierker prefers that more than 50% by weight of the sum of the hydrocarbons are selected from C9, C11, C13, C15, C17, C19, C21 and C23 hydrocarbons (Paragraph 0017), the reference does not exclude inclusion of other hydrocarbons, such as dodecane and tetradecane, especially in amounts of less than 5% by weight based on the sum of the hydrocarbons.
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 1-8 and 10-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 8,895,039 B2 in view of Arnaud et al. (FR2965476A1; published: 04/06/2012; IDS of 06/07/2023) and Dierker et al. (US20100189665A1; published: 07/29/2010; effectively filed: 06/12/2008; PTO-892).
US ‘039 claims 1 and 7 recite a cosmetic formulation and method of preparing said formulation comprising more than 85% by weight, based on the sum of the hydrocarbons present in the formulation, of an emollient, wherein the emollient is a linear saturated hydrocarbon selected from the group consisting of n-heptane, n-nonane, n-undecane, n-tridecane, n-pentadecane, n-heptadecane, n-nonadecane, n-heneicosane and n-tricosane and mixtures thereof. US ‘039 claims 3 and 5 recite that the formulation further comprises at least one UV light protection filter and at least one pigment and/or dye. US ‘039 claim 6 recites that the formulation further comprises at least one additional oil body.
An ordinarily skilled artisan could at once envisage an embodiment wherein the emollient comprises n-tridecane, wherein more than 85% by weight tridecane, based on the sum of the hydrocarbons present in the cosmetic formulation, overlaps and thus renders obvious the instantly claimed amount of unsaturated linear C13 hydrocarbon. While the Examiner notes that “decorative or sun care cosmetic” is an intended use of the instantly claimed composition, a formulation comprising a UV light protection filter would necessarily be a sun care cosmetic, and the formulation is necessarily free of perfumes, perfume oils, and fragrances.
The claims of US ‘039 differ from the instant claims in that the claims of US ‘039 do not explicitly recite the relative amounts of hydrocarbons as recited in instant claims 1-8; or that the formulation comprises: 0.1 to 80% by weight of the claimed hydrocarbon mixture as recited in claim 11; at least one perfume, perfume oil, or fragrance as recited in instant claim 12; or at least one gelling agent as recited in instant claim 15.
The teachings of Arnaud and Dierker are as set forth above and further incorporated herein.
Regarding instant claims 1-3: It would have been obvious to one of ordinary skill in the art to modify the formulation recited in the claims of US ‘039 further including undecane, dodecane, and tetradecane, which would result in a formulation that is itself a hydrocarbon mixture, because the combination of these linear alkanes with tridecane is known in the art to facilitate the manufacture of cosmetic products by improving the dispersion of raw materials within the products. Because tridecane is already present in an amount of more than 85% by weight based on the sum of the hydrocarbons, the amount of undecane/dodecane and the amount of tetradecane is necessarily less than 15% by weight based on the sum of the hydrocarbons, which overlaps and thus renders obvious the claimed ranges.
It is generally noted that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Given that Applicant did not point out the criticality of the specific hydrocarbon concentrations of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum concentration. Note: MPEP 2144.05.
Regarding claims 4-6: The claims of US ‘039 do not recite that the n-tridecane comprises additional components, and Arnaud explicitly teaches that its mixtures of alkanes contain less than 1% by weight of aromatic hydrocarbons and less than 0.1% by weight of unsaturated hydrocarbons (Page 3). Therefore, the hydrocarbon mixture taught by the combination of US ‘039 claims and Arnaud necessarily comprises aromatic hydrocarbons, unsaturated hydrocarbons, and tetradecanol within the instantly claimed ranges.
Regarding claims 7-8: The formulation taught by the combination of US ‘039 claims and Arnaud does not comprise hydrocarbons having a carbon chain length greater than or equal to 17, or hydrocarbons having a carbon chain length less than or equal to 10, and therefore meets the limitations wherein the sum of said hydrocarbons is less than or equal to 0.5% by weight based on the sum of the hydrocarbons.
Regarding claim 11: It would have been obvious to one of ordinary skill in the art to modify the hydrocarbons within the formulation taught by the combination of US ‘039 claims Arnaud such that the total amount of undecane and tridecane comprises between 0.1% to 80% by weight of the formulation because Dierker teaches that this amount of C11 and C13 hydrocarbons is particularly useful for producing cosmetic formulations with improved sensory properties, better skin compatibility, and good dispersibility of pigments (Paragraphs 0003-0005). Thus, the total amount of hydrocarbons—including undecane, dodecane, tridecane, and tetradecane—in the cosmetic formulation would substantially overlap and thus render obvious the instantly claimed range, given that undecane and tridecane comprise more than 85% by weight based on the sum of hydrocarbons in the hydrocarbon mixture.
Regarding claim 12: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the formulation taught by the combination of US ‘039 claims, Arnaud, and Dierker by further including at least one perfume oil to achieve a desired odor or fragrance as taught by Dierker.
Regarding claim 15: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the formulation taught by the combination of US ‘039 claims, Arnaud, and Dierker by further including a gelling agent in order to improve the product’s stability as taught by Arnaud.
An ordinarily skilled artisan would reasonably expect success in modifying the claims of US ‘039 with the teachings of Arnaud and Dierker as proposed because the claims of US ‘039 do not exclude the inclusion of hydrocarbons other than the claimed emollient, as supported by the limitation “based on the sum of the hydrocarbons present in the cosmetic formulation”, which indicates that other hydrocarbons may be present in the formulation, and the permittance of at least one additional oily body. Further, all ingredients and concentrations are well known in the art to be useful in formulating oily cosmetic compositions with improved dispersibility.
Claims 1-8 and 10-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 9,839,797 B2 in view of Dierker et al. (US20100189665A1; published: 07/29/2010; effectively filed: 06/12/2008; PTO-892) and Arnaud et al. (FR2965476A1; published: 04/06/2012; IDS of 06/07/2023).
US ‘797 claims recite a process for production of linear saturated alkanes from one or more primary alcohols, and claim 17 recites that the primary alcohol is 1-tetradecanol and the linear saturated alkane is tridecane. US ‘797 claim 14 recites that the linear saturated alkane is incorporated into a cosmetic preparation.
The claims of US ‘797 do not expressly recite that the preparation further comprises the relative amounts of hydrocarbons as recited in instant claims 1-8, or the further limitations of instant claims 10-15.
Regarding instant claims 1-3: It would have been obvious to one of ordinary skill in the art to modify the formulation recited in the claims of US ‘797 by including tridecane in an amount of greater than 95% by weight based on the sum of hydrocarbons in the formulation as taught by Dierker and then including undecane, dodecane, and tetradecane as taught by Arnaud because the combination of these linear alkanes with tridecane is known in the art to facilitate the manufacture of cosmetic products by improving the dispersion of raw materials within the products. Because tridecane is present in an amount of more than 95% by weight based on the sum of the hydrocarbons, the amount of undecane/dodecane and the amount of tetradecane is necessarily less than 5% by weight based on the sum of the hydrocarbons, which overlaps and thus renders obvious the claimed ranges.
It is generally noted that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Given that Applicant did not point out the criticality of the specific hydrocarbon concentrations of the invention, it is concluded that the normal desire of scientists or artisans to improve upon what is already generally known would provide the motivation to determine where in a disclosed set of ranges is the optimum concentration. Note: MPEP 2144.05.
Regarding claims 4-6: The tridecane of US ‘797 claims is synthesized and purified using a nearly identical method to that disclosed in Applicant’s instant specification (Instant Specification, Page 41, Preparation example 1). Arnaud explicitly teaches that its mixtures of alkanes contain less than 1% by weight of aromatic hydrocarbons and less than 0.1% by weight of unsaturated hydrocarbons (Page 3). Therefore, the hydrocarbon mixture taught by the combination of US ‘797 claims and Arnaud necessarily comprises aromatic hydrocarbons, unsaturated hydrocarbons, and tetradecanol within the instantly claimed ranges.
Regarding claims 7-8: The formulation taught by the combination of US ‘797 claims, Dieker, and Arnaud does not comprise hydrocarbons having a carbon chain length greater than or equal to 17, or hydrocarbons having a carbon chain length less than or equal to 10, and therefore meets the limitations wherein the sum of said hydrocarbons is less than or equal to 0.5% by weight based on the sum of the hydrocarbons.
Regarding claims 10-11: While the Examiner notes that “decorative or sun care cosmetic” is an intended use of the instantly claimed composition, it would have been obvious to one of ordinary skill in the art to modify the hydrocarbons within the formulation taught by the combination of US ‘797 claims, Dierker, and Arnaud such that the total amount of undecane and tridecane comprises between 0.1% to 80% by weight of the formulation because Dierker teaches that this amount of C11 and C13 hydrocarbons is particularly useful for producing cosmetic formulations with improved sensory properties, better skin compatibility, and good dispersibility of pigments (Paragraphs 0003-0005). Thus, the total amount of hydrocarbons—including undecane, dodecane, tridecane, and tetradecane—in the cosmetic formulation would substantially overlap and thus render obvious the instantly claimed range, given that undecane and tridecane comprise more than 95% by weight based on the sum of hydrocarbons in the hydrocarbon mixture.
Regarding claims 12-13: The formulation taught by the combination of US ‘797 claims, Dierker, and Arnaud does not comprise perfumes, perfume oils, and fragrances and, therefore, reads on claim 13. Alternatively, it would have been obvious to one of ordinary skill in the art to modify the formulation taught by the combination of US ‘797 claims, Dierker, and Arnaud by further including at least one perfume oil to achieve a desired odor or fragrance as taught by Dierker.
Regarding claim 14: It would have been obvious to one of ordinary skill in the art to modify the formulation taught by the combination of US ‘797 claims, Dierker, and Arnaud by further including at least one UV light protection filter and/or pigment and/or dye to absorb ultraviolet rays and/or achieve a desired formulation color (Paragraphs 0038-0065).
Regarding claim 15: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the formulation taught by the combination of US ‘797 claims, Dierker, and Arnaud by further including a gelling agent in order to improve the product’s stability as taught by Arnaud.
An ordinarily skilled artisan would reasonably expect success in modifying the claims of US ‘797 with the teachings of Dierker and Arnaud as proposed because all ingredients and concentrations are well known in the art to be useful in formulating oily cosmetic compositions with improved dispersibility.
Conclusion
No claim is allowed.
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/SARAH C WISTNER/Examiner, Art Unit 1616
/Mina Haghighatian/Primary Examiner, Art Unit 1616