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 .
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 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.
DETAILED ACTION
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/03/2026 was filed after the mailing date of the non-final rejection on 11/04/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of claims
Claims 12-17, 19, and 20 have been withdrawn. Claims 1-11 and 18 are under examination in the instant office action.
Rejections withdrawn
Applicant’s arguments filed on 02/03/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn.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.
Rejections maintained
The following rejections of the claims are remained for reasons of record and the following.
Claim Rejections - 35 USC § 102
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.
Claims 1, 3, 5, 6, 8-11, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Von Hof et al. (US 2019/0202771 A1).
Von Hof et al. meet all of the limitations of claims 1, 5, 6, 8, and 18. Von Hof et al. disclose in paragraph 64 A2) and B2) a polyglycerol partial ester with a degree of esterification of 45-85% (the instant claim 8) (claim 18) obtained by esterification of polyglycerol having an average degree of condensation of 3 to 5 (paragraph 22) (the claimed a in the instant claim 1) with a carboxylic acid mixture of
polyhydroxycarboxylic acid such as polyhydroxystearic acid (monocarboxylic acid, the claimed c in the instant claim 1 and the instant claim 6),
at least one C8-12 short-chain dicarboxylic acid (the claimed b in the instant claim 1) such as aliphatic, linear dicarboxylic acids, oxalic acid (the instant claims 5 and 18) (claim 5),
at least one long-chain dicarboxylic acid; and
at least one C16-20 linear, unsaturated and branched, or saturated fatty acids (monocarboxylic acid, the claimed c in the instant claim 1 and the instant claim 6)
wherein there are 0.3-0.6 mole short-chain dicarboxylic acid / 1 mole of polyglycerol and 1.2-2.2 mol C16-20 linear, unsaturated and branched, or saturated fatty acids / 1 mole of polyglycerol (claim 20).
The molar ratio between the carboxyl groups in the carboxylic acid mixture and the hydroxy groups in the polyglycerol is calculated to be 36 to 100 (the 3rd wherein clause in the instant claim 1) based on 0.3 mole short-chain dicarboxylic acid, 1.2 mol C16-20 fatty acids, and 1 mol triglycerol (5 mole -OH in 1 mole triglycerol, 0.6 mole carboxyl in 0.3 mol short-chain dicarboxylic acid, 1.2 mole carboxyl in 1.2 mol fatty acid) ((0.6 + 1.2) / 5 = 0.36) and the molar ratio among polyglycerol, short-chain dicarboxylic acid, and fatty acid is calculated to be 1 : 0.3 : 1.2 (within the claimed 1:1:1 to 4:1:10 → 1 : 1-0.25 : 1-2.5, (the 4th wherein clause in the instant claim 1).
Von Hof et al. do not disclose the short-chain dicarboxylic acid and the linear, unsaturated and branched, or saturated fatty acid being impure, thus, the short-chain dicarboxylic acid and the linear, unsaturated and branched, or saturated fatty acid disclosed by Von Hof et al. are pure and thus short-chain dicarboxylic acid% = 100%, i.e., no impurity (the 1st wherein clause in the instant claim 1), and linear, unsaturated and branched, or saturated fatty acid% = 100%, i.e., no impurity (the 2nd wherein clause in the instant claim 1).
Von Hof et al. meet all of the limitations of claims 9-11. Although Von Hof et al. are silent about the properties of polyglycerol partial ester in the instant claims 9-11, as a result of the polyglycerol partial ester is the same as claimed, the polyglycerol partial ester would necessarily have the claimed properties, whether expressly recognized by Von Hof et al. or not. Please refer to MPEP 2112.01 II and MPEP 2112.V:
“Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.
it is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594, second column, first full paragraph).
Von Hof et al. meet all of the limitations of claim 3. Von Hof et al. disclose the polyglycerol comprising 10-40% diglycerol (paragraph 29).
Response to Applicants’ arguments:
Applicants argue that the content of 0.2-0.5 mol of C34-38 dicarboxylic acid is not considered.
However, this argument is not deemed persuasive. Von Hof et al. disclose, in claim 20, 0.3-0.6 mole short-chain dicarboxylic acid / 1 mole of polyglycerol and 1.2-2.2 mol C16-20 linear, unsaturated and branched, or saturated fatty acids / 1 mole of polyglycerol which is used to calculate the relative molar ratio of polyglycerol : short-chain dicarboxylic acid : C16-20 linear, unsaturated and branched, or saturated fatty acids. The content of 0.2-0.5 mol of C34-38 dicarboxylic acid is irrelevant since b) in the claimed molar ratio in the wherein clause is mole of short-chain dicarboxylic acid which does not include the mole of C34-38 dicarboxylic acid.
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, 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 under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
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(a) 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, 6, 8-11, and 18 are rejected under 35 U.S.C. 103(a) as being unpatentable over Von Hof et al. (US 2019/0202771 A1).
The teachings of Von Hof et al. are discussed above and applied in the same manner. Von Hof et al. also teach polyglycerol comprising 0-15% glycerol (paragraph 28).
Von Hof et al. do not specify the same weight percentage of glycerine in the instant claim 2 (0-15% vs the claimed 0.05-25%).
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition overlaps with the range disclosed in the prior art, such as in the instant rejection.
The claimed range of glycerine is 0.05-25% by weight and the range of glycine taught in the prior art is 0-15% by weight and therefor, overlaps with the claimed range.
Claims 1-6, 8-11, and 18 are rejected under 35 U.S.C. 103(a) as being unpatentable over Von Hof et al. (US 2019/0202771 A1) in view of Wenk et al. (US 2012/0308503 A1).
The teachings of Von Hof et al. are discussed above and applied in the same manner. Von Hof et al. also teach the polyglycerol having cyclic structures (paragraph 20).
Von Hof et al. do not specify the same weight percentage of cyclic isomer glycerine in the instant claim 4.
This deficiency is cured by Wenk et al. who teach polyglycerol partial esters obtained by esterification of polyglycerol, having an average degree of polymerization of from 2 to 8 and at least 1% cyclic structures, with at least one monocarboxylic acid and at least one dicarboxylic acid (claim 7); wherein the monocarboxylic acid incudes stearic acid (C18 monocarboxylic acid) (paragraph 66) and the dicarboxylic acid includes dimer fatty acids of a mix of acyclic and cyclic dicarboxylic acids, succinic acid (C4 dicarboxylic acid), and phthalic acid (aromatic dicarboxylic acid) (paragraph 69-71) and polyglycerol has d 6.9% cyclic structures as a result of polymerizing in examples 1-7, wherein the percentage are determined by the GC method (paragraph 62) and thus the weight percentage of the cyclic structures in polyglycerol would be about 6.9%.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Von Hof et al. and Wenk et al. to specify the amount of the polyglycerol for esterification taught by Von Hof et al. being about 6.9% by weight as a by-product. Polymerized glycerol having about 6.9% by weight was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying it flows from its having been used in the prior art, and from its being recognized in the prior art as useful for the same purpose.
Claims 1-11 and 18 are rejected under 35 U.S.C. 103(a) as being unpatentable over Von Hof et al. (US 2019/0202771 A1) as evidenced by Frihart (Chemistry of Dimer Acid Production from Fatty Acids and the Structure–Property Relationships of Polyamides Made from These Dimer Acids, Polymers, 2023, 15, 3345) in view of Wenk et al. (US 2012/0308503 A1).
The teachings of Von Hof et al. are discussed above and applied in the same manner. Von Hof et al. also teach long-chain dicarboxylic acid is selected from those obtainable from the dimerization of oleic acid and/or linoleic acid. The mixtures obtainable from such a process known as dimer fatty acids can comprise not only the long-chain acyclic and cyclic dicarboxylic acids (paragraph 53).
According to Frihart the clay-catalyzed oleic dimer comprising about 25% aromatic acid (the paragraphs on page 5, figure 3, and table 1).
Thus, a person of ordinary skill in the art can readily envisage the product of dimerization of oleic acid and/or linoleic acid taught by Von Hof et al. including about 25% aromatic acid (the instant claim 7).
Response to Applicants’ arguments:
Argument regarding the 103 rejections are basically the same as the above rejection, thus the response discussed above applies here as well and is not persuasive for reason discussed above.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-11 and 18 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,807,603 B2.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows:
Although the patent and instant claims are not identical, they are not patentably distinct from each other because claims in both applications are drawn to the same polyglycerol partial ester.
Response to Arguments:
Argument regarding the nonstatutory obviousness-type double patenting rejection is basically the same as the above 102 rejection, thus the response discussed above applies here as well and is not persuasive for reason discussed above.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 extension fee 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 HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HONG YU/
Primary Examiner, Art Unit 1614
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