DETAILED ACTION
Claims 1-25, submitted 10 October 2023, are pending in the application and under examination in the instant Office 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 of component A,
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wherein R1 is 1,3-dihydroxy-2-hydroxymethylpropan-2-yl and R2 and R3 are hydrogen (tromethamine), and component B, wherein component B is CH3(CH2)8CH((CH2)6CH3)COOH, i.e., isostearic acid, in the reply filed on 18 March 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The Examiner did not find prior art on the elected species, therefore, the elected species is free of the art. As such, the scope of the search was expanded to include the broader genus.
Claim Objections
Claim 13 is objected to because of the following informalities: Claim 13 recites “formula (II)” in line 3 of the claim. The formula of claim 13 is drawn to formula (III). Formula (II) is present in instant claim 3 and claim 13 is dependent of claim 11 which is further dependent of claim 1. Applicant is asked to amend the claim to read “formula (III)” Appropriate correction is required.
Claim 16 is objected to because of the following informalities: Claim 16 recites “formula (I)” in line 2 of the claim. Formula (I) is also present in instant claim 3. For the same reasons above, Applicant is asked to please amend the claim to read “formula (III)”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8 and 11-22 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Koji et al. (JP 2014-131974). As the JP document is published in Japanese and the Examiner does not read Japanese, the Examiner acquired a machine translation to cite as the English equivalent of the original JP document. The machine translation document cited by the Examiner is attached.
Koji teaches a surface activating additive which comprises a cation and an anion wherein the cation is a quaternary ammonium cation containing a branched-chain polyhydroxylalkyl group having two or more hydroxy groups and hydrogen atoms (paragraph 96; Abstract; paragraphs 28-29) and wherein the anion is a saturated branched aliphatic monocarboxylic acid anion (e.g., isostearic acid) (paragraphs 34-35 and 37), shown below. The compound shown below also reads on the limitations of instant claim 2 which recites “wherein the component (A) is an amine or ammonium compound comprising a branched hydroxyaliphatic hydrocarbon group having one or more hydroxy groups…”. Additionally, Koji teaches wherein “an organic salt having a melting point of 100°C or lower is referred to as an ionic liquid, and in particular, an organic salt that exist in a liquid state even at room temperature (25°C) is referred to as a room temperature ionic liquid” (paragraph 0003). The above also reads on the limitations of instant claim 11 which recites “…an organic salt formed by: a cation originated from the component (A) and an anion originated from an anionic residue of the component (B)…”. Consequently, claim 12 is also rejected on the basis that Koji teaches an ammonium cation.
Chemical formula 10 taught by Koji
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(paragraph 114)
Regarding claim 3, Koji teaches chemical formula I N+[R1]n[R2]4-n (paragraph 0020). This reads on the limitations of the Applicant’s chemical formula 2 of N+[R3]n[R4]4-n X- when R3 is a hydroxyaliphatic hydrocarbon group in which a hydrocarbon moiety thereof has 2-8 carbons; R4 is a hydrogen atom; and when n represents an integer of 1-4. The Applicant’s X- moiety represents an anion which Koji teaches as present in the composition in paragraph 0019 of the machine translation document.
Regarding claim 4, Chemical formula 10, shown above, teaches wherein all of the R4s in formula II are hydrogen atoms. Chemical formula 10 also teaches wherein the hydroxyaliphatic hydrocarbon group is a saturated hydroxyaliphatic hydrocarbon group whose hydrocarbon moiety contains 4 carbon atoms and further contains 3 hydroxy groups, which reads on the limitations of instant claims 5 and 6. Consequently, this also reads on the limitations of instant claim 8 which further limits the R3 moiety to a branched hydroxyaliphatic hydrocarbon group having one or more hydroxy groups.
With respect to claim 7, Koji teaches a compound wherein at least one of the R3 equivalent moieties of the Applicant’s formula II is a linear saturated hydroxyaliphatic hydrocarbon group having two carbon atoms in the compound shown below.
Chemical formula 90
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(paragraph 0242)
With respect to claim 13, Koji teaches the chemical formula N+[R1]n[R2]4-n (paragraph 0020).This is similar to chemical formula 3, N+[R5]o[R6]4-o, taught by the Applicant wherein R5 represents a hydroxyaliphatic hydrocarbon group having one or more hydroxy groups, R6 represents a hydrogen atom or an organic group having 1-22 carbon atoms and o is an integer of 1-4. Koji teaches wherein the R1 moiety represents a linear or branched polyhydroxyalkyl group having 2-8 carbon atoms and having two or more hydroxyl groups, R2 is hydrogen and n is an integer of 1-4. As shown above in chemical formula 10, Koji teaches wherein all R6 equivalent moieties are hydrogen atoms which reads on the limitations of instant claim 14. Furthermore, Koji teaches wherein the hydroxyaliphatic hydrocarbon group is a branched saturated hydroxyaliphatic hydrocarbon group whose hydrocarbon moiety contains 4 carbon atoms and further contains 3 hydroxy groups. This also reads instant claim 16 which recites the limitation “…wherein at least one of the R5s in the formula (I) is a saturated hydroxyaliphatic hydrocarbon group having 1 to 3 hydroxy groups…”. Finally, this also reads on instant claims 18 and 19 which recites the limitations “wherein at least one of the R5s in the formula (III) is a branched hydroxyaliphatic hydrocarbon group having one or more hydroxy groups…” and “wherein at least one of the R6s in the cation expressed by the formula (III) is a hydrogen atom…”.
Regarding claim 17, Koji teaches the above referenced compound, chemical formula 90, which teaches wherein at least one of the R5s in formula (III) is a linear saturated hydroxyaliphatic hydrocarbon group in which a hydrocarbon moiety thereof has 1 to 22 carbon atoms.
With respect to claim 20, Koji teaches this limitation by reciting “Examples of the carboxylate anion include a saturated aliphatic monocarboxylic acid anion, an unsaturated aliphatic monocarboxylic acid anion…” (paragraph 0035). Followed by stating “the unsaturated aliphatic monocarboxylic acid anion preferably has 3-22 carbon atoms.” (paragraph 0038). This reference also teaches the limitations of instant claim 21 by stating that “a saturated aliphatic monocarboxylic acid anion selected from HCOO - and CH3(CH2)pCOO- (p represents an integer of O to 4) and a saturated aliphatic monocarboxylic acid anion having a branched chain are preferable” (paragraph 0037).
With respect to claim 22, Koji states that the compounds of Examples 1-85 and the Comparative Examples were formed into an anhydride to confirm the liquid properties at room temperature (25°C) (paragraph 0246).
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 5-7, 10, 20 and 23-25 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Fiero ( "Salts of triethanolamine." The Journal of the American Pharmaceutical Association (1912) 27.8 (1938): 658-660.).
Fiero discloses a composition comprising triethanolamine salts in the use as surfactants (pg. 660, Section “Summary”). Fiero teaches a surface activating additive that reads on the limitations of instant claim 1 when component (A) is an amine compound having a hydroxyaliphatic hydrogen group that contains 3 hydroxy groups and component (B) is a branched aliphatic acid having 18 carbon atoms by teaching a triethanolamine oleate compound (pg. 659, Section “Surface Tension”). The compound, exemplified below, is identical to the formulation as defined in additive No. 6, found in paragraph 143 of the Applicant’s specification, when the R1, R2 and R3 moieties of component A,
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, are
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and component B is
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. This also reads on instant claim 3, in part, which recites the limitation of Chemical formula (I), N[R1]m[R2]3-m, when R1 is a linear saturated hydroxyaliphatic hydrocarbon group and m is 3, wherein each R1 moiety contains 1 hydroxy group and 2 carbon atoms. Consequently, this also reads on the limitations of instant claim 5 which recites “wherein the hydroxyaliphatic hydrocarbon group in the formula (I) or (II) is a saturated hydroxyaliphatic hydrocarbon group whose hydrocarbon group has 1-22 carbon atoms…” and, in part, the limitations of instant claim 6 which further specify that the saturated hydroxyaliphatic hydrocarbon group has 1-3 hydroxy groups. Claim 7 is also rejected in part due to Fiero teaching the limitations of instant claim 7 which are drawn to a linear saturated hydroxyaliphatic hydrocarbon group. Moreover, instant claim 10 is also rejected, in part, due to Fiero teaching a component representative of formula (I). Finally, Fiero teaches the limitations of instant claim 20 which states “wherein the unsaturated aliphatic acid having 8 to 22 carbon atoms…”.
Regarding claim 23, Fiero teaches an emulsion composition comprising the additive according to claim 1 by combining triethanolamine mixed in water with the fatty acid, oleate, mixed with mineral oil to form an emulsion composition (pg. 660, Section “Emulsification”). With respect to claims 24-25, because Fiero teaches the additive according to claim 1 in an emulsion and these claims do not require any additional components, these claims are also anticipated. The recitation of “cosmetic” and “lubricant” in claims 24 and 25, respectively, is being treated as an intended use of an emulsion comprising the additive of claim 1.
Exemplified triethanolamine oleate
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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.
Claims 1, 3, 5-7, 10, 20, and 23-24 are rejected under 35 U.S.C. 103 as being unpatentable over Fiero ("Salts of triethanolamine." The Journal of the American Pharmaceutical Association (1912) 27.8 (1938): 658-660.).
The teachings of Fiero are applied to claims 1, 3, 5-7, 10, 20 and 23, as discussed in the 102 rejections above, and the teaching of that reference is incorporated herein.
While Fiero does not explicitly teach a cosmetic as an emulsion composition comprising the additive of according to claim 1, it would have been prima facie obvious for a person having ordinary skill in the art to modify the teachings of Fiero to arrive at the instantly claimed invention. The ordinarily skilled artisan would have had an expectation of success because Fiero states “Triethanolamine, combined with a fatty acid, is being used to a large extent as an emulsifying agent, particularly in the field of cosmetics.” (pg. 658, 1st paragraph). Additionally, Fiero states “surface tension decreased and the relative foam production increased with the number of carbon atoms of the saturated fatty acid up to 12 and then decreased”, followed by “The stearate, oleate and laurate exhibited the best emulsifying powers.” (pg. 660, Section “Summary”). Therefore, it would have been prima facie obvious for a person having ordinary skill in the art, prior to the effective filing date of the instantly claimed invention, to modify the teachings of Fiero use the emulsifying composition in a cosmetic, to arrive at the instantly claimed invention.
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The closest prior art is Koji, cited above. However, Koji fails to teach the limitation wherein the X- anion of formula (II) is a hydroxide ion.
Conclusion
No claims are allowed.
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JUSTIN CHRISTOPHER SANCHEZ
Examiner
Art Unit 1622
/J.C.S./Examiner, Art Unit 1622
/JAMES H ALSTRUM-ACEVEDO/Supervisory Patent Examiner, Art Unit 1622
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