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 .
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.
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Herstein USPN 5902591.
Regarding claims 1-10, 19 and 20, Herstein teaches a lipid emulsion composition comprising (Col. 6, lines 19-34):
1-20% unsaturated triglyceride esters such as oils of castor, safflower, cottonseed, corn, cod liver, palm, sesame and soybean. (Col. 7, lines 42-44,Col. 8, lines 1-3)
0.1 to 20% Water soluble antioxidant comprising ascorbic acid (vitamin C) (Col. 2, lines 53-57)
1-10% Amphiphilic dispersant comprising lecithin (Col. 4, line 66-Col. 5, line 1,39-40)
Montmorillonite phyllosilicate organoclay that has been swelled and exfoliated in a ratio to the ascorbic acid of 0.05-0.5:1 (Col. 4, lines 1-30)
30-70% water
The proportions of unsaturated lipid, antioxidant, dispersant, phyllosilicate, water and water:phyllosilicate disclosed by Herstein overlap or encompass the proportions of these components recited in claims 1, 2, 8-10, 19 and 20. 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) Given that Herstein recites the same ingredients as claimed by applicant, the emulsion of Herstein would have ingredients disposed as described by the functional language of claims 1 and 10. Therefore, Herstein renders obvious claims 1-10, 19 and 20.
Regarding claims 11 and 12, It would have been obvious to one of ordinary skill in the art at the time the application was filed to have varied the proportions of hydrophobic and hydrophilic ingredients in Herstein depending on whether an oil in water or water in oil emulsion was desired. The clay of Herstein would be disposed in the lipid phase and the proportions of clay disclosed by Herstein overlap or encompass the proportions recited in claims 11 and 12. 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’s amendments are sufficient to overcome the previously pending rejection under 35 U.S.C. 112(b). Applicant's arguments filed 20 July 2026 have been fully considered but they are not persuasive.
Applicant asserts on page 8 of the remarks that Herstein addresses a different technical problem from that disclosed by applicant. This assertion is not germane because the technical effect described by applicant is not inherently present in the invention reflected in the instantly pending claims. Likewise, the differences between the organoclay of Herstein and that disclosed by applicant enumerated on pages 9-10 of the remarks are not germane as the instantly pending claims do not recite the phyllosilicate claimed with any specificity. As such, all of these remarks are not commensurate in scope with the presently claimed invention. Applicant discusses “effective adsorption” on page 10 of the remarks, but not such requirement exists in the present claims. The instant claims only require that some modicum of water is “absorbed” which is clearly provided by Herstein. Similarly, on page 11 applicant asserts that a specific process is required for the exfoliation claimed, but the present claims are structured so broadly that they do not require any specific amount of exfoliation. Applicant has also failed to provide any evidence comparing the claimed invention to the closest prior art to demonstrate that the features applicant insists are required by the claims are lacking in Herstein. Therefore, applicant’s arguments are not found persuasive.
Conclusion
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 Michele L Jacobson whose telephone number is (571)272-8905. The examiner can normally be reached Monday through Friday from 10-6.
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, Emily Le can be reached at (571) 272-0903. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michele L Jacobson/Primary Examiner, Art Unit 1793
