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 .
The Group and/or Art Unit location of your application in the PTO has changed. All correspondence regarding this application should be directed to Examiner Lori Mattison in Group Art Unit 1619.
DETAILED ACTION
Election/Restrictions
Newly submitted claims 19-23 are directed to an categories of invention for which lack of unity due to lack of a special technical feature was previously demonstrated. Newly added claim 19 is properly placed with Group III, claim 20 is properly placed with Group IV, Claim 21 is properly placed with Group V, Claims 22 & 23 are properly placed with Group VI (see Election/Restriction: mailed 07/11/2025). Claims 19-23 are withdrawn based upon the election dated 10 September 2025, wherein Applicant elected Group I for consideration.
Claim Status
Applicant’s declaration, claim amendments and arguments in the response filed 05 January 2026 are acknowledged.
Claims 1-4, 6, 8 & 10-23 are pending.
Claims 5, 7 & 9 are cancelled.
Claim 1 is amended.
Claims 16-23 are new.
Claims 4, 6, 8, 10-15 & 19-23 withdrawn.
Claims 1-3 & 16-18 are under consideration.
Declaration Filed Under § 1.132
The declaration filed on 05 January 2026 by Applicant is acknowledged. The declaration is addressed in the response to Applicant’s traverse below.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of 35 U.S.C. 112 (pre-AIA ). See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. EP 20215216.1, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph for one or more claims of this application.
The prior-filed application does not disclose the Markush grouping of fatty acids recited in claim 1.
The earliest date available to the pending claims is December 16, 2021
Withdrawn Objections/Rejections
The objection to the disclosure is withdrawn due to amendments which increase the length of the abstract and its description of the invention.
The objection to claim 1 is withdrawn due to the amendment which adds a comma between “caproic acid” and “caprylic acid”.
The rejection of claims 1-3, 5, 7 and 9 under 35 U.S.C. 103 over Almeida in view of Marangoni and Zander and the rejection of claims 1-3, 5, 7 and 9 under 35 U.S.C. 103 over Zander in view of Almeida due to amendments which recite the dimer diol is present in an amount of 25%.
The provisional rejection of claims 1-3, 5, 7 and 9 on the ground of nonstatutory double patenting over claims 1, 5, 6 and 15 of copending Application No. 17/265,907 in view of Almeida, Marangoni and Zander is withdrawn due to amendments which recite the dimer diol is present in an amount of 25% and the ‘907 application maturing to US Patent No. 12,433,831.
New & Maintained Rejections
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3 & 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Peeters (WO 2020/035387, published February 20, 2020; previously cited) in view of Marangoni (WO 2010/143066, published December 16, 2010; previously cited).
With regard to claims 1, 3, 16 & 18, Peeters teaches a gel-like preblend that “ comprises or consists of” 0.01 to 30 wt% of one or more ethyl cellulose polymer(s) and 70 to 99.99% of the one or more alcohols (page 5, lines 4-11). With regard to claims 1 & 16, Peeters teaches compositions comprising an alcohol comprising at least 36 carbon atoms and which is liquid at 25 °C. With regard to claims 1 & 16, the alcohol is a dimer diol (Peter’s claim 6). With regard to claims 1 & 16, the alcohol is preferably branched and may also be chosen from Guerbet alcohols or/and combinations of Guerbet alcohols with dimer diols (page 2, lines 14-15). With regard to claims 1 & 16, the exemplary Guerbet alcohol is isoC36 alcohol (isohexatriacontanol which is a liquid branched primary alcohol of Formula (I) as evidenced by page 15, lines 6-11 of the instant specification; page 12, lines 12, 13; page 13, Table 1). With regard to claims 1, 2, 16 & 17, Peeters further exemplifies embodiments wherein the dimer diol or the isoC36 are used in the same amount (Table 1). With regard to claims 1, 2, 16 & 17, the ordinary skilled artisan, before the effective filing date, would immediately envisage the weight ratio of the branched quantity alcohol being 1 [yielding the dimer diol in an amount of 35% to 49.99%] because Peeters teaches combinations of Guerbet alcohols with dimer diols and equal amounts of the branched primary alcohol and dimer diol is an obvious place in which to start optimization. Since Peeters teaches composition comprises or consists of 70 to 99.99% of the one or more alcohols which may be a combination branched primary alcohols and dimer diols, the composition has a totally quantity of dimer diol and branched primary alcohol of Formula (I) of at least 70% by weight (page 5, lines 4-11; as applied to claims 1 & 16). The compositions may have shear-thinning and thixotropic properties (page 5, lines 17, 18). The compositions have applications in cosmetics (page 6, lines 17, 18). With regard to claim 15, Peeters teaches inclusion of isoamyl laurate (page, lines 19-25). The compositions may further comprise surfactants (page 11, lines 21, 22).
Peeters does not teach at least 5 wt% of a glyceryl mono fatty acid ester comprising a fatty acid inclusive of oleic acid.
These deficiencies are made up for in the teachings of Marangoni.
With regard to claims 1 & 16, Marangoni teaches polymer gelation of oils; an oleogel is prepared by combining ethylcellulose polymer with an edible (polar) oil and a surfactant inclusive of glyceryl monooleate (glyceryl mono fatty acid ester of oleic acid; title; abstract; claims, in particular 1, 3, 5, 6, 8, 14; page 5, lines 7-15). With regard to claims 1 & 16, the addition of the surfactant plasticizes the polymer and slows down the gelation process (increases the gelation time; page 8, lines 9-22). Marangoni further exemplifies embodiments comprising either one oil (e.g., Example 3) or two different oils in respective amounts of 20 wt% and 72 wt% (e.g., Example 1). With regard to claims 1 & 16, Marangoni teaches the ratio of polymer to surfactant is from 10:1 to 1:1 (page 9, lines 10-15).
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 compositions of Peeters to further comprise a surfactant inclusive of glyceryl monooleate in a surfactant to ethylcellulose weight ratio of 1:1 to 1:10 [yielding glyceryl monooleate in an amount of 0.001 to 30 wt%] as taught by Marangoni in order to plasticize the ethylcellulose and to optimize the rate of gelation. There would be a reasonable expectation of success because Peeters embraces the presence of surfactants.
Regarding claims 2 & 17, the combined teachings of the prior art render obvious compositions comprising either the same amount of the alcohol and the dimer diol (e.g., Peeters) or differing amounts of two different oils (e.g., Marangoni), therefore, the prior art renders obvious ratios of 1:1, ratios greater than 1:1 and ratios less than 1:1.
With regard to the recited amounts of dimer diol, glyceryl mono fatty acid ester; ethyl cellulose polymer, and total quantity of dimer diol and branched primary alcohol of Formula (I); and the weight ratio of branched primary alcohols of Formula (I)/ quantity of dimer diol, the combined teachings of Peeters and Marangoni teach these parameters with values which overlap or fall within the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant traverses the rejection of claim 1-3, 5, 7 and 9 under 35 USC 103(a) over Peeters in view of Marangoni arguing there is no reason to combine the references, the combination of references does not teach or suggest every claim element and the evidence of record demonstrates unexpected results (reply, pg. 10). Declarant argues the recited combination presents an advantage of being in the form of a gel at a temperature up to 50 °C or even higher temperatures (Declaration-pg. 2). Declarant argues in their declaration that a dimer diol content of at least 25% by weight is significant to achieve this technical effect (Declaration-pg. 3) and uses Comparative Combination 3 which has only 20% dimer diol to show that at 20% dimer diol the combination is no longer a gel at 30°C (Declaration-pg. 3; reply, pg. 9). Applicant’s representative further points to Example 1-3, 2.3, 3 and 4 in the specification for the claimed features of transparency, stability, pourability at 70°C and 90 °C, and spreadability (reply, pg. 9).
This is not persuasive. With regard to the argument that there is no motivation to combine references, Peeters teaches inclusion of surfactants in their ethylcellulose containing gel and Marangoni teaches ethylcellulose polymer with an edible (polar) oil and a surfactant inclusive of glyceryl monooleate is used in gelation of oleogels to plasticize the ethylcellulose and to optimize the rate of gelation.
With regard to the Applicant’s argument that the combination of references do not teach or suggest every claim element, the Examiner notes that Applicant’s representative fails to point out what claim element is lacking from the combination of Peeters and Marangoni. Peeters teaches the composition comprises or consists of 70 to 99.99% of the one or more alcohols which may be a combination branched primary alcohols and dimer diols. A 50/50 mixture is an obvious place to start optimization, yielding 35%-49.99% of a dimer diol and 35-49.99% of a branched fatty alcohol. Peeters also teaches 0.01 to 30 wt% of one or more ethyl cellulose polymer(s). Peeters teaches inclusion of a surfactant and Marangoni teaches inclusion of surfactant which may be glyceryl monooleate in combination with ethylcellulose polymers. Marangoni teaches the ratio of ethylcellulose polymer to surfactant is from 10:1 to 1:1. Following the suggested teachings of Peeters and Marangoni yields a gel containing glyceryl monooleate in an amount of 0.001 to 30 wt%.
With regard to Applicant’s arguments pertaining to the features of transparency, stability, pourability at 70°C and 90 °C, and spreadability, the Examiner notes that none of claims recite these parameters. Applicant is arguing unrecited features. It is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
While Applicant’s Comparative Combination 3 which has only 20% dimer diol is persuasive for showing dimer diols values beneath the recited lower limit of 25% do not work, it does not render Peeters’ teachings nonobvious. Peeters teaches the composition comprises or consists of 70 to 99.99% of the one or more alcohols which may be a combination branched primary alcohols and dimer diols. A 50/50 mixture is an obvious place to start optimization, yielding 35%-49.99% of a dimer diol and 35-49.99% of a branched fatty alcohol. Applicant has not shown criticality for the upper limit of the range.
Further, the data present by Applicant in Examples 1-3, 2.3, 3 and 4 in the specification are not commensurate with breadth of the claims. For example, no amount for the branched primary alcohol of Formula (I) is recited by claims 1 & 16. However Example 1 examined branched primary alcohols of Formula (I) in amounts of 49.2-50.2. Example 3 evaluated Combination 1 with emollient in a 20/80 ratio, yielding a branched primary alcohol concentration of 9.80% [Math: 0.492 * 0.20 = 9.80%]. Further, the upper limit for the combination of dimer diol and branched primary alcohol is 92% [Math: 100- (5% + 3 %)= 92%] and the lower limit is 70%. However, Example 1 shows combinations of 82-84% were only evaluated. No evaluation of the upper limit of 67% for the branched primary alcohol when the dimer diol was held to the lower limit of 25% was presented [Math: 92-25= 67]. Lastly, the amount of ethylcellulose polymer in the Example 1 combinations were held to concentrations of 6-8% but claims 1 & 16 permit higher concentrations. Ethylcellulose is a known structurant/gelling agent. It is unclear what higher concentrations of ethylcellulose would achieve in relation to maintenance of a gel at 70°C and 90°C since ethyl cellulose melts at 240-255°C. "[O]bjective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
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 1-3 & 16-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5, 7 & 10-13 of U.S. Patent No. 12,433,831 (hereinafter the ‘831; Published 10/07/2025) in view of Peeters (WO 2020/035387, published February 20, 2020) and Marangoni (WO 2010/143066, published December 16, 2010).
Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘831 recites a first composition comprising a liquid alcohol comprising at least 36 carbon atoms that is a Guerbet alcohol (i.e. branched primary alcohol), dimer diol or poly(dimer diol) and comprising an ethylcellulose polymer, the weight ratio of the alcohol to the ethylcellulose ranging from 6:1 to 499:1 and are drawn to a second composition comprising the alcohol and the ethylcellulose. With regard to claims 1, 2, 16 & 17, the ordinary skilled artisan, before the effective filing date, would immediately envisage the weight ratio of the branched primary alcohol to the dimer diol being 1 as an obvious an obvious place in which to start optimization. The ‘831 in claim 10 recites the alcohol and ethyl cellulose polymer are combined as a premix and the product is thixotropic and shear-thinning.
The ‘831 does not recite the amount of dimer diol, glyceryl mono fatty acid ester and their amount, the amount of ethyl cellulose polymer or that the total quantity of the dimer diol and branched primary alcohol of Formula (I ) is of at least 70% by weight.
The teachings of Peeters are described above in the 35 USC 103(a) rejections above. Peeters teaches a composition that comprises or consists of 70 to 99.99% of the one or more alcohols which may be a combination of branched primary alcohols and dimer diols, the composition has a total quantity of dimer diol and branched primary alcohol of Formula (I) of at least 70% by weight (page 5, lines 4-11). A 50/50 mixture is an obvious place to start optimization, yielding 35-49.99% dimer diols and 35-49.99% branched primary alcohols. Peeters teaches the exemplary Guerbet alcohol is isoC36 alcohol (isohexatriacontanol which is a liquid branched primary alcohol of Formula (I) as evidenced by page 15, lines 6-11 of the instant specification; page 12, lines 12, 13; page 13, Table 1). With regard to claim 3, Peeters teaches their gel-like preblend that “comprises or consists of” 0.01 to 30 wt% of one or more ethyl cellulose polymers (page 5, lines 4-11)
The teachings of Marangoni are described above. With regard to claims 1 & 16, Marangoni teaches polymer gelation of oils; an oleogel is prepared by combining ethylcellulose polymer with an edible (polar) oil and a surfactant inclusive of glyceryl monooleate (glyceryl mono fatty acid ester of oleic acid; title; abstract; claims, in particular 1, 3, 5, 6, 8, 14; page 5, lines 7-15). With regard to claims 1 & 16, the addition of the surfactant plasticizes the polymer and slows down the gelation process (increases the gelation time; page 8, lines 9-22). Marangoni further exemplifies embodiments comprising either one oil (e.g., Example 3) or two different oils in respective amounts of 20 wt% and 72 wt% (e.g., Example 1). With regard to claims 1 & 16, Marangoni teaches the ratio of polymer to surfactant is from 10:1 to 1:1 (page 9, lines 10-15).
It would have been prima facie obvious to the ordinary skilled artisan before the effective filing date to have modified the compositions of the ‘831 by adjusting the amount of the dimer diols to be 35-49.99% and the branched primary alcohols to be 35-49.99% [yielding a branched primary alcohol to dimer diol ratio of 1] with the branched primary alcohol inclusive to isohexatriacontanol and the amount of ethyl cellulose polymers to be from 0.01 to 30 wt% as suggested by Peeters and adding a surfactant inclusive of glyceryl monooleate in a surfactant to ethylcellulose weight ratio of 1:1 to 1:10 [yielding glyceryl monooleate in an amount of 0.001 to 30 wt%] as taught by Marangoni because these amounts are suitable for preparing thickening/thixotropic blends as taught by Peeters and Marangoni. The ordinary skilled artisan would have been motivated to do so in order to incorporate of the dimer diol in the Guerbet alcohol/polar oil and in order to optimize the gelation process.
Regarding the recitation that the combination is in the form of a gel, the combination suggested by the combined teachings of the ‘831, Peeters and Marangoni are necessarily a gel because Peeters teaches they are gel like and Marangoni teaches the composition is an oleogel. Further, the combination suggested by the combined teachings of the ‘831 comprise a dimer diol, branched primary alcohol, glyceryl monooleate and ethyl cellulose in the recited amounts. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORI K MATTISON whose telephone number is (571)270-5866. The examiner can normally be reached 9-7 (M-F).
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/LORI K MATTISON/Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619
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