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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/08/2026 has been entered.
Withdrawn Rejections:
Applicant's amendments and arguments filed on 05/08/2026 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 Any rejection and/or objection not specifically addressed below is herein withdrawn.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, 32-45 and 47 read on the elected species and are under examination; Claims 30, 31, 46 do not read on the elected species and are withdrawn from consideration.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, 30-47 are pending, claims 28, 32-45 and 47 are under examination.
Claim Objections
Claim 28 is objected to because of the following informalities: claim 28 recites “wherein the cosmetic composition contains 1 to 95 wt-%” without mentioning 1-95% of what ingredient. According to deepening claims 36 and 39, it appears that after “1 to 95 wt-%”, “of the at least one compound” is missed. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 32 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 32 recites many compounds with only partial structure in table of mono-ethers. The following two are only examples. Thus, one artisan in the art does not know what compounds are claimed, and the scope and boundary of claim is unclear. This is indefinite. Applicants are required to make sure each compound has completed structure in the claim.
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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, 32-45 and 47 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]). Additional ingredient such as glycerin and tocopherol are included in the composition such as gel cream (page 24, Gel cream table)
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).
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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.
Regarding the limitation of additional cosmetic ingredient, Wagner teaches colorant ingredient, glycerin and tocopherol, which are all cosmetic 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 compound 1,1,3,3-tertamethyl ether, no teaching additional ingredients and the claimed invention excluded sunscreen. All arguments are incorporated herein by reference.
In repose to this argument: this is not persuasive. As discussed in the above 103 rejection, Wagner teaches n-pentyl-1,1,3,3-tetramethyl butyl ether or isoamyl-1,1,3,3-tetramethyl butyl ether, which is stilled recited in amended claim 28. Furthermore, Wagner teaches additional ingredients such as glycerin, tocopherol and colorant ingredients in skin and hair care cosmetic composition. Regarding sunscreen composition, sunscreen composition is skin care composition. Additionally, Wagner teaches clearly skin care and hair care composition as discussed in the above 103 rejection. 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.
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.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613
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