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 .
Withdrawn Rejections:
Applicant's amendments and arguments filed on 12/03/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below is herein withdrawn.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
The application is examined in view of n-pentyl-1,1,3,3-tetramethyl butyl ether as specific compound of formula (I). Claims 28-29, 32-45 read on the elected species and are under examination; Claims 30, 31, 46 do not read on the elected species and are withdrawn from consideration.
Claims 28-46 are pending, claims 28-29, 32-45 are under examination.
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 28-29, 32-45 are rejected under 35 U.S.C. 103 as being unpatentable over Wagner (US20110212039) as evidenced by Karinen et al. (“Etherification of C5- and C8-alkene with C1 to C4-alcohol”, Catalysis Letters Vol. 76, No. 1–2, 2001; cited in IDS).
Additional species isoamyl-1,1,3,3-tetramethyl butyl ether, isobutyl-1,1,3,3-tetramethyl butyl ether and n-octyl-1,1,3,3-tetramethyl butyl ether are examined for compact prosecution purpose.
Determination of the scope and content of the prior art
(MPEP 2141.01)
Wagner teaches compounds for the protecting hair and skin (abstract). The composition in the form of O/W emulsion comprises 1-60% of oil such as fatty alcohol, ester, vegetable oil such as soybean oil and olive oil, linear or branched, symmetric or asymmetric dialkyl ethers having a total of from 12 to 36 carbon atoms, especially from 12 to 24 carbon atoms, for example di-n-octyl ether, di-n-decyl ether, di-n-nonyl ether, di-n-undecyl ether, di-n-dodecyl ether, n-hexyl n-octyl ether, n-octyl n-decyl ether, n-decyl n-undecyl ether, n-undecyl n-dodecyl ether, n-hexyl n-undecyl ether, di-tert-butyl ether, diisopentyl ether, di-3-ethyldecyl ether, tert-butyl n-octyl ether, isopentyl n-octyl ether and 2-methyl pentyl-n-octyl ether (page 32, [0114-0115]; page 33, [0116]). The cosmetic composition is in the form of various skin care composition and hair care composition such as shampoo and preparation with natural colorant (page 37, [0172-0188]).
Karinen et al. teaches preparation of ether compound from 2,4,4-trimethyl-2-pentene (TMP2) (page 82, section 2.2; page 83, Table 2).
PNG
media_image1.png
935
551
media_image1.png
Greyscale
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Wagner is that Wagner do not expressly teach those specific ether.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to produce the instant invention.
One of ordinary skill in the art would have been motivated to have n-pentyl-1,1,3,3-tetramethyl butyl ether or isoamyl-1,1,3,3-tetramethyl butyl ether in the cosmetic composition because they are position isomer of isopentyl n-octyl ether in the cosmetic composition of Wagner. MPEP 2144.09, A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See In re Papesch, 315 F.2d 381, 137 USPQ 43 (CCPA 1963). Compounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Therefore, it is obvious to have n-pentyl-1,1,3,3-tetramethyl butyl ether or isoamyl-1,1,3,3-tetramethyl butyl ether in the cosmetic composition and produce instant claimed invention with reasonable expectation of success.
One of ordinary skill in the art would have been motivated to have isobutyl-1,1,3,3-tetramethyl butyl ether or n-octyl-1,1,3,3-tetramethyl butyl ether in the cosmetic composition because they are position isomer of tert-butyl n-octyl ether or di-n-octyl ether in in the cosmetic composition of Wagner for the same above rational.
As evidenced by Karinen et al. that all those species n-pentyl-1,1,3,3-tetramethyl butyl ether, isoamyl-1,1,3,3-tetramethyl butyl ether, isobutyl-1,1,3,3-tetramethyl butyl ether and n-octyl-1,1,3,3-tetramethyl butyl ether can be easily prepared from 2,4,4-trimethyl-2-pentene (TMP2). Furthermore, species isobutyl-1,1,3,3-tetramethyl butyl ether is the compound 2-isobutyloxy-2,4,4-trimethyl-pentane in Table 2 of Karinen et al.
Regarding the amount of the compound in cosmetic composition, Wagner teaches 1-60% of ether compound as oil in the cosmetic composition in skin and hair care composition including cosmetic composition with color ingredients.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Response to argument:
Applicants argue that none of Wagner and Karinen et al. teaches claimed invention, and Wagner can not be combined with Karinen et al. as well as hindsight. All arguments are incorporated herein by reference.
In repose to this argument: this is not persuasive. As discussed in the above 103 rejection, one of ordinary skill in the art would have been motivated to have n-pentyl-1,1,3,3-tetramethyl butyl ether or isoamyl-1,1,3,3-tetramethyl butyl ether in the cosmetic composition because they are position isomer of isopentyl n-octyl ether in the cosmetic composition of Wagner, thus Wagner alone teaches applicant’s claimed invention. Karinen et al. is relied on for providing evidence that those claimed compound can be easily prepared, thus it is properly relied on even if Karinen et al. teaching is in different field. Since Wagner solely teaches applicant’s claimed invention, there is no issue of hindsight. Furthermore, In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Therefore, the 103 rejection is still proper.
MPEP 2141 III states: “The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.” Respectfully, after weighing all the evidence, the Examiner has reached a determination that the instant claims are not patentable in view of the preponderance of evidence and consideration of all the facts which is more convincing than the evidence which has been offered in opposition to it.
Conclusion
No claim is allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached at (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIANFENG SONG/Primary Examiner, Art Unit 1613
Prosecution Insights