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/Restriction
Inventor’s election, without traverse, of Group I (claims 1-20), and the combination of propylene glycol monooleate and soybean phosphotidylcholine, as the group and species, respectively, elected to begin prosecution is acknowledged. The election/restriction is hereby made FINAL.
Markush Search
The elected species - the combination of propylene glycol monooleate and soybean phosphatidylcholine - has been searched and is not deemed free of the prior art.
All claimed but as yet unexamined subject matter which does not read on the above combination is hereby withdrawn from consideration for, purposes of this Office Action, as being drawn to non-elected subject matter. This subject matter will be rejoined as appropriate as the Markush examination progresses.
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.
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, 2, 6 and 8-10, in so far as they read on the elected combination above, are rejected under 35 U.S.C. 103 as being unpatentable over JP 53073206 A, whose SciFinder English language abstract has been relied upon for purposes of this Office Action.
Inventor teaches, as an elected combination, a non-lamellar liquid crystal-forming composition comprising (1) a fatty acid ester which is propylene glycol monooleate and (2) a phospholipid having a hydrophilic group (defined in the specification at page 7, line 1) and having one hydroxyl group, or a salt thereof, and which is not represented by General Formulas (A)-(D) and which is soybean phosphotidylcholine (claim 1). Dependent claim 2 teaches that the fatty acid ester has 6-24 carbons. Dependent claim 6 teaches that the fatty acid ester is of General Formula (I). Dependent claim 8 teaches that the glycol is at least propylene glycol, ethylene glycol, etc. Dependent claim 9 teaches that the phospholipid is phosphatidylcholine, phosphatidylethanolamine, or a salt thereof. Dependent claim 10 teaches that the phospholipid is soybean phosphatidylcholine, egg yolk phosphatidylcholine, etc.
JP 53073206 A teaches a mixture, utilized as an antioxidant for fats, of soybean phospholipids (or tocopherol) and propylene glycol fatty acid esters such as propylene glycol monooleate (Reg. No. 1330-80-9).
First, the examiner points out for clarity of the record that if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention and the preamble of the claim merely states the intended use or purpose of the invention (“A non-lamellar liquid crystal-forming composition comprising…”), rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. (Note the discussion at MPEP 2111.02, II.) That being the case, limitations with respect to the intended use or purpose of the instant combination are given no patentable weight and the claims are considered to be drawn simply to, essentially, a combination of the instantly taught fatty acid ester and the instantly taught phospholipid.
Inventor distinguishes over the cited art essentially in that soybean phosphatidylcholine is explicitly taught as the soybean phospholipid. However, one of ordinary skill in the art, before the effective filing date of the instant invention, would have found it obvious to choose any soybean phospholipid, which would include soybean phosphotidylcholine, as the soybean phospholipid in the prior art combination. One of ordinary skill in the art would have done so, and with a reasonable expectation of success, absent unexpected results, because the cited art explicitly teaches that the entire class of soybean phospholipids is suitable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J DAVIS whose telephone number is (571)272-0638. The examiner can normally be reached M-F 8:30-5:00 PM EDT.
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, Ali Soroush, can be reached at 571-272-9925. 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.
/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 6/14/2026
Prosecution Insights