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 .
Election/Restrictions
Applicant's election with traverse of group I, claims 1-9 in the reply filed on 9 December 2025 is acknowledged. The restriction between claims 1-9 and 10-12 is hereby withdrawn because these claims lack patentable distinctness. Claims 10-12 are examined with claims 1-9 herein.
The traversal is on the grounds that Senanayake and Gers-Barlag fail to demonstrate that the corresponding special technical feature does not make a contribution over the prior art. While not acquiescing to the impropriety of the restriction requirement, the corresponding special technical feature of the claims does not make a contribution over the prior art as demonstrated by the rejection of claims 1 and 10 below.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-12 are 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.
Claims 1 and 10 recite the phrase “such as” and claims 2, 3 and 6-12 recite the phrase “preferably”. This exemplary language makes it unclear whether the claimed narrower recitation is a limitation and therefore these claims are indefinite. (MPEP 2173.05(d)) Claims 4 and 5 depend from claim 1 and therefore necessarily inherit the deficiencies therein. Appropriate correction is required.
Claim 7 recites “wherein the lecithin sheets are smectite sheets”. The phrase “the lecithin sheets” lack proper antecedent basis in the claims. Neither claim 7 nor claim 1, from which claim 7 depends, positively recite “lecithin sheets”. Additionally, lecithin does not form sheets within the context of the invention. For the purpose of examination, smectite sheets will be interpreted to read on claim 7. Appropriate correction is required.
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, 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 and water disclosed by Herstein overlap or encompass the proportions of these components recited in claims 1, 2 and 8-10. 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.
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)
Conclusion
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.
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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