DETAILED ACTION
Status of Claims
Claims 1-7 are currently pending and are the subject of this Office Action. This is the first Office Action on the merits of the claims. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Office Action: Non-Final
Claim Objections
The following claims are objected to because of the following informalities:
A. Claims 1 and 4-7 are objected to because the terms, “solketal esters,” “mono glyceryl solketal ester,” “solketal monoester,” “glyceryl acetal esters” and “it” are used without any apparent consistency.
B. Claim 3 is objected to because the claim should read “purified glycerins with [[a]] above 90% purity,” to the extent this recitation is intended as limiting.
Appropriate correction is required.
Claim Rejections – 35 U.S.C. § 112 - Indefiniteness
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.
Claims 1-7 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 pre-AIA , that applicant regards as the invention.
A. Claim 1 is drawn to:
1. A synthetic molecule of solketal esters from palm kit oil and glycerin for cosmetic and agricultural formulations wherein mono glyceryl solketal ester is obtained from palm kernel oil, coconut oil, macauba oil and glycerin as solubilizer in the form of the cocoyl solketal ester, more particularly the solketal monoester prepared from oils and/or fatty acids of coconut, babassu, palm kernel, represented by the chemical structure
PNG
media_image1.png
264
438
media_image1.png
Greyscale
wherein R1 is ketones containing from 1 to 6 carbons, more particularly from 3 to 4 carbons and R2 is monocarboxylic acids from 2 to 18, linear or branched, more particularly monocarboxylic acids with 12 carbons or more.
and recites multiple claimed products obtainable from product-by-process limitations of differing scope:
“solketal esters” obtainable “from palm kit oil and glycerin,”
“mono glyceryl solketal ester” obtainable “from palm kernel oil, coconut oil, macauba oil and glycerin as solubilizer in the form of the cocoyl solketal ester,”
“solketal monoester” obtainable “from oils and/or fatty acids of coconut, babassu, palm kernel” in the form of “glyceryl acetal esters” that are “represented by the chemical structure
PNG
media_image2.png
200
400
media_image2.png
Greyscale
which renders the metes and bounds of the claim unclear as whether or not the latter is intended as limiting. Further, the use of the phrase “more particularly” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention (i.e., “the solketal monoester prepared from oils and/or fatty acids of coconut, babassu, palm kernel, represented by the chemical structure […]”). In this regard, it is noted that the Board has held: “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. §112, second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (expanded panel). Subsequent claims 2-7 depend on claim 1 and are thus, indefinite as well.
B. Claim 1 is drawn to a “solketal monoester” that is:
represented by the chemical structure
PNG
media_image1.png
264
438
media_image1.png
Greyscale
wherein R1 is ketones containing from 1 to 6 carbons, more particularly from 3 to 4 carbons and R2 is monocarboxylic acids from 2 to 18, linear or branched, more particularly monocarboxylic acids with 12 carbons or more.
wherein the recitations, “wherein R1 is ketones containing from 1 to 6 carbons,” and “R2 is monocarboxylic acids from 2 to 18” are unclear as to whether:
the former requires a carbonyl group, and the latter requires a carboxyl group,
or whether the terms “ketones” and “monocarboxylic acids” refers to product-by-process requirements in obtaining the claimed structure with “R1” and “R2” since par. [0039]-[0041] of the instant published application, US 2024/0225981 A1, states that “Rl represents 3 to 8 carbons” and “R2 represents 8 to 18 carbons.”
C. Claim 1 is indefinite for the use of “more particularly” in the phrases:
“R1 is ketones containing from 1 to 6 carbons, more particularly from 3 to 4 carbons,” and
“R2 is monocarboxylic acids from 2 to 18, linear or branched, more particularly monocarboxylic acids with 12 carbons or more”
which renders the claim indefinite because it is unclear whether the limitation following the phrase, “more particularly,” are part of the claimed invention.
D. Claim 2 is drawn to:
2. The synthetic molecule of solketal esters from palm kit oil and glycerin for cosmetic and agricultural formulations, according to claim 1, wherein the esters are prepared from esterification or transesterification, and the acetals can be prepared in advance or in situ, that is, with the formation reactions of acetals, esters formed concomitantly.
Which is indefinite in the recitation, “the acetals.” There is insufficient antecedent basis for this limitation in the claim as no “acetals” are recited in claim 1 from which claim 2 depends. See MPEP § 2173.05(e).
E. Claim 2 is drawn to:
2. The synthetic molecule of solketal esters from palm kit oil and glycerin for cosmetic and agricultural formulations, according to claim 1, wherein the esters are prepared from esterification or transesterification, and the acetals can be prepared in advance or in situ, that is, with the formation reactions of acetals, esters formed concomitantly.
wherein the use of the phrase, “that is,” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase (i.e., “with the formation reactions of acetals, esters formed concomitantly”) are part of the claimed invention. See MPEP § 2173.05(d).
F. Claim 3 is drawn to:
3. The synthetic molecule of solketal esters from palm kit oil and glycerin for cosmetic and agricultural formulations, according to claim 1, wherein glyceryl solketals are prepared from glycerin of various degrees of purity, more particularly purified glycerins with a above 90% purity.
wherein the use of “various” in the term, “glycerin of various degrees of purity,” is a relative term which renders the claim indefinite. The term “various” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Further, the use of the phrase, “more particularly,” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase (i.e., “purified glycerins with a above 90% purity”) are part of the claimed invention
Further clarification is required.
Claim Rejections – 35 U.S.C. § 102/103
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.
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.
Claims 1-7 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by GODTFREDSEN (WO 86/05186, Publ. Sep. 12, 1986; hereinafter, “Godtfredsen”), or in the alternative, over 35 U.S.C. § 103 as being obvious over GODTFREDSEN (WO 86/05186, Publ. Sep. 12, 1986; hereinafter, “Godtfredsen”).
Godtfredsen is directed to:
Title: PROCESS FOR ESTERIFICATION
Abstract
Selective esterification of only one of the hydroxy groups in polyols is achieved using an acetalized or a ketalized polyol as the starting material and an enzyme catalysing esterification. Furthermore, the selective esterified polyols may be obtained by concomitant acetalisation or ketalisation and esterification of a ketal or acetal in the presence of an enzyme catalysing esterification.
Godtfredsen, title & abstract. In this regard, Gotfredsen teaches compounds of “general formula I”:
The above, two process variants can be combined in that they relate to a process for preparing compounds of the general formula I
PNG
media_image3.png
200
400
media_image3.png
Greyscale
wherein R1, R2 and R3 are the same or different each representing hydrogen, alkyl, lower alkoxy, aryl or aryl(lower alkyl) each of which may be substituted with one or more of the following groups: hydroxy, amino, carboxy, nitro, cyano, aryl, lower alkoxy, lower alkylthio or lower alkylen, preferably one or two substituents, R4 and R5 each represent hydrogen or R4 together with R5 represents straight or branched lower alkylen which may be substituted with one or more of the following groups: hydroxy, hydroxymethyl, amino, carboxy, nitro, cyano, aryl, lower alkoxy, lower alkylthio or lower alkylen, and which alkylen moiety may be interrupted by oxygen, preferably one or two substituents, or R4 and R5 together with the moiety
PNG
media_image4.png
200
400
media_image4.png
Greyscale
from formula I represents a carbohydrate moiety wherein - apart from one hydroxy group - the hydroxy groups, if desired, are acetalized or ketalized, which is characterized by treating an alcohol of the general formula II
PNG
media_image5.png
200
400
media_image5.png
Greyscale
wherein R4 and R5 are as stated above, R11 and R12 each represents hydroxy, or R11 together with R12 represents a moiety of the general formula VI
PNG
media_image6.png
200
400
media_image6.png
Greyscale
wherein R1 and R2 are as stated above, with a carboxylic acid or a carboxylic acid ester of the general formula IV
PNG
media_image7.png
200
400
media_image7.png
Greyscale
wherein R3 is as stated above, and R6 represents hydrogen or has one of the meanings stated for R1, above, or represents a group of the general formula V
PNG
media_image8.png
200
400
media_image8.png
Greyscale
wherein R9 and R10 have the meanings stated for R4 and R5, above, and R7 and R8 are the same or different and each has one of the meanings stated for R3, above, in the presence of an enzyme catalyzing esterification and, in case R11 and R12 each are hydroxy, in the presence of a carbonyl compound of the general formula III
PNG
media_image9.png
200
400
media_image9.png
Greyscale
wherein R1 and R2 each are as stated above, and an agent catalyzing formation of acetal and ketal under dehydrating conditions.
Godtfredsen, p. 5, ln. 34 to p. 7, ln. 26.
Regarding independent claim 1 and the requirements:
1. A synthetic molecule of solketal esters from palm kit oil and glycerin for cosmetic and agricultural formulations wherein mono glyceryl solketal ester is obtained from palm kernel oil, coconut oil, macauba oil and glycerin as solubilizer in the form of the cocoyl solketal ester, more particularly the solketal monoester prepared from oils and/or fatty acids of coconut, babassu, palm kernel, represented by the chemical structure
PNG
media_image1.png
264
438
media_image1.png
Greyscale
wherein R1 is ketones containing from 1 to 6 carbons, more particularly from 3 to 4 carbons and R2 is monocarboxylic acids from 2 to 18, linear or branched, more particularly monocarboxylic acids with 12 carbons or more.
Gotfredsen teaches compounds of “general formula I”:
PNG
media_image3.png
200
400
media_image3.png
Greyscale
(Godtfredsen, p. 5, ln. 34 to p. 7, ln. 26) “wherein R1, R2 and R3 are the same or different each representing hydrogen, alkyl, […], R4 and R5 each represent hydrogen” (Godtfredsen, p. 6, ln. 8-14), encompass the chemical structure for “glyceryl acetal esters” of claim 1. However, to the extent that Godtfredsen DOES NOT EXPRESSLY TEACH the “glyceryl acetal esters” of claim 1 with sufficient particularity to be anticipatory, it would otherwise be obvious.
It is further noted that the requirements of claim 1 for “solketal esters from palm kit oil and glycerin for cosmetic and agricultural formulations wherein mono glyceryl solketal ester is obtained from palm kernel oil, coconut oil, macauba oil and glycerin as solubilizer in the form of the cocoyl solketal ester, more particularly the solketal monoester prepared from oils and/or fatty acids of coconut, babassu, palm kernel,” as well as the requirements of claim 2-3 for
2. The synthetic molecule of solketal esters from palm kit oil and glycerin for cosmetic and agricultural formulations, according to claim 1, wherein the esters are prepared from esterification or transesterification, and the acetals can be prepared in advance or in situ, that is, with the formation reactions of acetals, esters formed concomitantly.
3. The synthetic molecule of solketal esters from palm kit oil and glycerin for cosmetic and agricultural formulations, according to claim 1, wherein glyceryl solketals are prepared from glycerin of various degrees of purity, more particularly purified glycerins with a above 90% purity.
are product-by-process requirements. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Since, Godtfredsen teaches the structure of “glyceryl acetal esters” of claim 1, Godtfredsen teaches a structure that reads on, or in the alternative is obvious, and therefore, meets the above-noted product-by-process requirements.
It is further noted that the requirements of claim 1, “for cosmetic and agricultural formulations,” as well as the requirements of claims 4-7 for:
4. The synthetic molecule of solketal esters from palm kit oil and glycerin for cosmetic and agricultural formulations, according to claim 1, wherein it is used in protective filters against solar radiation, emollients, as aqueous or oily spreading agents.
5. The synthetic molecule of solketal esters from palm kit oil and glycerin for cosmetic and agricultural formulations, according to claim 1, wherein it is used in cosmetic formulations for makeup removal.
6. The synthetic molecule of solketal esters from palm kit oil and glycerin for cosmetic and agricultural formulations, according to claim 1, wherein it is used in antiperspirant deodorant formulations of the “roll on” or spray type.
7. The synthetic molecule of solketal esters from palm kit oil and glycerin for cosmetic and agricultural formulations, according to claim 1, wherein it is used for agricultural formulations as a solubilizer of herbicide, insecticide, fungicide and acaricide molecules.
are recitations of intended use. Recitations of intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it reads on the claim, see MPEP § 2103 (I)(C). Since, Godtfredsen teaches the structure of “glyceryl acetal esters” of claim 1, it would reasonably follow that Gotfredsen’s compounds of “general formula I” (Godtfredsen, p. 5, ln. 34 to p. 7, ln. 26) would be suitable for the intended uses recited in claims 4-7. It is further noted that MPEP § 2112(I) states that “the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Thus, Godtfredsen anticipates, or in the alternative, renders claims 1-7 obvious.
Conclusion
Claims 1-7 are rejected. No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC LAZARO whose telephone number is (571)272-2845. The examiner can normally be reached on Monday through Friday, 8:30am to 5:00pm EST; alternating Fridays out.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BETHANY BARHAM can be reached on (571)272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DOMINIC LAZARO/Primary Examiner, Art Unit 1611