DETAILED ACTION
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 Claims
Claims 1-6, 8-14, 16-19 and 21-27 are pending. Claims 21-27 are newly added. Claims 7, 15 and 20 are canceled. Claims 1, 6, 9, 13-14 and 16-18 are amended.
Claims 22, 24 and 27 are withdrawn as being drawn to an unelected species.
Claims 1-6, 8-14, 16-19, 21, 23 and 25-26 are examined on their merits in light of the species of the ester that is the liquid ester of Formula I wherein R is a 10 carbon linear alkenyl and R1 is a 7 carbon linear alkyl and the polyester that is Polyhydroxystearic Acid.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
New Rejections/Rejections Maintained
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 of this title, 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.
The rejection of claims 1-6, 8-14 and 16-19 and newly applied to claims 21 and 23 under 35 U.S.C. 103 as being unpatentable over Lin US 2008/0299057 (12/4/2008) in view of Croom et al. US 2021/0059924 (3/4/2021) and Barrett et al. US 2012/0219515 (8/30/2012) as evidenced by https://www.healthchems.com/Products/Polyhydroxystearic-Acid-180772.html, CIR Report Data Sheet and Burgo et al. WO 2010/019939 (2/18/2010).
Lin teaches methods and compositions for dispersion of solid particles, especially pigments, metal oxides and mineral fillers in organic media. (See Abstract). Lin teaches that the dispersing composition include an oil soluble surfactant and a mixture of an anhydride based polymer with polyhydroxystearic acid and optionally a liquid oil carrier. (See Abstract and [0016]). Lin teaches that its composition can include sunscreens. (See [0092]).
Lin teaches that the prior art has long used polyhydroxystearic acid as a dispersant for preparing oil dispersion of titanium dioxide and zinc oxide particles. (See [0005]). The dispersant is present in an amount of from 3 to 20% by weight. (See [0080]). Suitable sun-care actives include titanium dioxide and zinc oxide (See [0092]).
Lin teaches that a useful optional ingredient in the anhydrous dispersing composition is a liquid oil which is used as diluents or carriers to extend the composition and to control viscosity especially when metal oxides or pigments are incorporated to form concentrated dispersion. (See [0071]). A sunscreen composition is called for in instant claims 17 and 18. (See [0092]).
Polyhydroxystearic acid is called for in instant claims 8, 21 and 23 and it is the elected species of polyester with a terminal carboxyl functional group called for in instant claims 1 and 16.
Polyhydroxystearic acid is a polyester with a single terminal carboxylic acid functional group as called for in instant claim 5 as evidenced by the CIR Report Data Sheet. Polyhydroxystearic acid is a polyester with a number-average molecular weight of 1243 g/mol as evidenced by the CIR Report Data Sheet in Chemical Properties Section. 1243 g/mol is less than about 10,000 g/mol as called for in instant claim 6. Polyhydroxystearic acid has an Acid value of 44-52 mg KOH/g as evidenced by https://www.healthchems.com/Products/Polyhydroxystearic-Acid-180772.html. This is an Acid Value of at least 15 mg KOH/g as called for in instant claim 6.
Zinc oxide and titanium dioxide are called for in instant claim 13. (See [0092]). The zinc oxide and titanium dioxide can be not surface modified zinc oxide and non-surface modified titanium dioxides as called for in instant claim 11. (See [0092]). The amount of both zinc oxide and titanium dioxide are present in the range of from 50 wt% to about 80 wt %. (See [0086]). 50 wt% to about 80 wt% overlaps with the about 15 wt% to about 75 wt% called for in instant claim 13. 50 wt% to about 80 wt% overlaps with the about 40 wt% to about 60 wt% called for in instant claim 14. A dispersion of zinc oxide and titanium dioxide metal oxides is called for in instant claim 16.
Lin teaches that the composition may be a low viscosity composition and that low viscosity liquid compositions are preferred by product manufacturers because they are pumpable and easy to transfer. Lin teaches that its liquid dispersing compositions can readily incorporate particulate materials such as pigments and metal oxides to form concentrated dispersion that have relatively low viscosity and are very easy to handle. Additionally, Lin’s dispersing compositions are capable of dispersing non-surface treated pigments, metal oxide particles easily into oils without the need of costly surface treatments. (See [0079]).
Lin teaches that its composition can be a dispersion having a viscosity of less than 300,000 cP. (See Lin claim 11). A viscosity of less than 300,000 cP overlaps with the less than about 1000 cP called for in instant claim 10. Lin expressly teaches that its composition can have emollients as a benefit agent. (See [0103]).
Lin does not teach heptyl undecylenate or a biobased composition. Lin also does not expressly teach a water-in-oil emulsion. These deficiencies are made up for with the teachings of Croom et al. and Barrett et al.
Croom et al. teaches composition including polyesters for use in cosmetics in which the compositions have greater than 98% bio-based components which are inherently biodegradeable. (See Abstract and [0002] and Example 22). Croom teaches that options for alternative to petroleum-based polymers and components are of increasing importance in the personal care industry. (See [0007]).
Greater than 98% biobased components overlaps with the 100% biobased polyester and 100% biobased ester called for in instant claim 9.
Croom teaches that appropriate polymers for its composition include polyhydroxystearic acid. (See [0054]). Croom also teaches that appropriate emollients or solvents for its composition include heptyl undecylenate. (See [0124]). Emollients can be present in an amount of 70-95% of the composition. (See [0032] and [0296]). Croom also teaches that there is market demand for higher naturally derived emollients. (See [0311]).
Heptyl undecylenate corresponds to an ester that possesses Formula I wherein R is a 10 carbon linear alkenyl and R1 is a 7 carbon linear alkyl and is the elected species of liquid ester in claims 1 and 16. R as a 10 carbon linear alkenyl falls within the C5-C17 linear alkenyl in instant claim 2 and R1 as a 7 carbon linear alkyl falls within the R1 is a C3-C18 linear alkyl in instant claim 2. Heptyl undecylenate itself is called for in instant claims 23 and 26.
Heptyl undecylenate has a viscosity of 5.67 cSt at 25 ˚C as evidenced by Table 2 [0033-0034]) in WO 2010/019939. 5.67 cSt at 25 ˚C is less than abut 100 cSt at 25 ˚C as called for in instant claim 4 and it is a liquid as called for in instant claim 3.
Barrett et al. (Barrett) discloses a sun-care composition having an SPF value of at least 15 containing (a) one or more sun-care actives, (b) a copolymer, and (c) a pharmaceutically acceptable vehicle (See Abstract). Suitable sun-care actives include titanium dioxide and zinc oxide (See [0038]). The amount of both zinc oxide and titanium dioxide are present in the range of from about 1 wt% to about wt 50%. (See [0038-0039]).
The composition may comprise two copolymers (i.e. film-forming polymer) (e.g. Aquaflex SF-40 and Advantage S) (See [0056], Formulation O). The sun-care composition can further comprise one or more additional components such as film former/waterproofing agents, emulsifiers, silicones and preservatives (See [0029], [0036], [0050]).
The composition may be formulated with an anhydrous solution as the vehicle. (See [0028]). Barrett also teaches that the composition can be an anhydrous suspension or dispersion or an anhydrous emulsion. (See [0030], [0052]). Barrett teaches that its composition can be a water-in-oil emulsion as called for in instant claim 19. (See [0052]).
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Lin sunscreen composition of an anhydrous dispersion of 50 wt% to 80 wt% untreated iron oxide and titanium dioxide particles in polyhydroxystearic acid to make the polyhydroxystearic acid greater than 98% biobased and to add 70 to 95% of greater than 98% biobased heptyl undecylenate as an emollient in light of Croom’s teaching that heptyl undecylenate is a suitable emollient in a biobased sunscreen composition and there is market demand for higher naturally derived emollients. There would be a reasonable expectation of success because Lin expressly teaches that its composition can have emollients as a benefit agent. (See [0103]).
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Lin sunscreen composition of an anhydrous dispersion of 50 wt% to 80 wt% untreated iron oxide and titanium dioxide particles in polyhydroxystearic acid to make the formulation a water-in-oil emulsion in light of Barrett’s teachings that this is a suitable and effective formulation type for a sunscreen with untreated iron oxide and titanium dioxide.
With respect to claims 1 and 16 and the ratio of ester to polyester, heptyl undecylenate is present in an amount of from 70% to 95% by weight, as taught by Croom. Polyhydroxystearic acid is present in an amount of 3% to 20 % by weight, as taught by Lin. If the lower ends of the ranges were chosen 70% ester to 3% polyhydroxystearic acid, 23:1, which falls within the from 7.33:1 to 24:1 called for in instant claims 1 and 16.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
The provisional rejection of claims 1-6, 8-14 and 16-19 and newly applied to claims 21 and 23 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-19 of U.S. Patent Appn. No. 18/490960 in view of Lin US 2008/0299057 (12/4/2008) and Croom et al. US 2021/0059924 (3/4/2021) is maintained.
Although the claims at issue are not identical, they are not patentably distinct from each other because in the instant case the claims recite a nonaqueous biobased composition for dispersing metal oxide particles of iron oxide and titanium dioxide comprising an heptyl undecylenic ester and polyhydroxystearic acid.
Claims 1-19 of US Patent Appn. No. 18/490960 are drawn to a nonaqueous biobased composition for dispersing metal oxide particles of iron oxide and titanium dioxide comprising an heptyl undecylenic ester and polyhydroxystearic acid.
Claims 1-19 of US Patent Appn. No. 18/490960 differ from those of the instant application in that they do not require heptyl undecenyl as the ester and polyhydroxystearic acid as the polyester and do not require a ratio of the ester to polyester to be from 7.33:1 to 24:1 based on weight percent.
These deficiencies are made up for with the teachings of Lin and Croom.
The teachings of Lin are described supra. It would have been prima facie obvious for a skilled artisan before the earliest effective filing date of the invention making the nonaqueous composition of US Patent Appn. No. 18/490960 to select polyhydroxystearic acid as the polyester in order to have a component that is known to work well to disperse untreated metal oxides in anhydrous conditions as taught by Lin.
The teachings of Croom are described supra. It would have been prima facie obvious for a skilled artisan before the earliest effective filing date of the invention making the nonaqueous composition of US Patent Appn. No. 18/490960 to use 70 to 95 wt% heptyl undecylenate as an emollient as taught by Croom in light of Croom’s teaching that heptyl undecylenate is a suitable emollient to be used in a biobased sunscreen composition and there is a market demand for higher content naturally derived emollients.
. This is a provisional double patenting rejection since the claims have not been patented.
Allowable Subject Matter
Claims 25 and 26 are allowable. The prior art does not teach or suggest a nonaqueous composition for dispersing metal oxide particles that consists of only the ester and the polyester.
Response to Arguments
Applicants’ comments of December 31, 2025 have been considered carefully. Applicants note the amendments to the claims and where support can be found for the amendments.
Double Patenting Rejection
Applicants note that a terminal disclaimer has been filed with respect to the provisional obviousness-type double patenting rejection and request the withdrawal of the provisional obviousness-type double patenting rejection.
Response
Please note that the terminal disclaimer filed December 31, 2025 has not been approved because the registration number for the signing attorney is incorrect. Please resubmit the terminal disclaimer with the correct registration number for the signing attorney. There is no fee required for the resubmission.
Until the resubmission and approval of the terminal disclaimer, the provisional
Obviousness Rejection
Applicants argue that the cited references do not teach or suggest the claimed nonaqueous composition comprising an ester and a polyester and having an ester:polyester ratio from 7.33:1 to 24:1 based on weight percent as in amended claims 1 and 16.
According to the Office Action, Lin teaches a dispersing composition that includes an oil soluble surfactant and a mixture of an anhydride based polymer with polyhydroxystearic acid and optionally a liquid oil carrier but does not teach heptyl undecylenate. While Lin does not teach an ester, Lin specifically requires a surfactant having a HLB less than 10. However, the claimed composition requires an ester -which is not a surfactant and has a different function than the surfactant required by Lin. The lipophilic surfactant of Lin is used as an emulsifier while the ester emollient has no emulsifying power. The skilled person starting from Lin would not be motivated to replace the surfactant of Lin with the claimed ester nor have any expectation of success in doing so.
Because Lin fails to disclose a composition that includes an ester/polyester combination, Lin also fails to disclose the claimed ester:polyester ratio.
Response
Applicants’ argument that the cited references do not teach or suggest the claimed nonaqueous composition comprising an ester and a polyester and having an ester:polyester ratio from 7.33:1 to 24:1 based on weight percent as claimed is not found to be persuasive. The cited references do teach the claimed ratio. As described in the rejection above, with respect to the claimed ratio of ester to polyester, heptyl undecylenate is present in an amount of from 70% to 95% by weight, as taught by Croom. Polyhydroxystearic acid is present in an amount of 3% to 20 % by weight, as taught by Lin. If the lower ends of the ranges were chosen 70% ester to 3% polyhydroxystearic acid, 23:1, which falls within the from 7.33:1 to 24:1 called for in instant claims 1 and 16.
Applicants’ argument that the skilled person starting from Lin would not be motivated to replace the surfactant of Lin with the claimed ester nor have any expectation of success in doing so is not found to be persuasive because the surfactant of Lin is not being replaced by the ester. Rather the ester is being added to the Lin composition. Lin expressly teaches that its composition can have emollients as a benefit agent. (See [0103]). Croom teaches that the heptyl undecylenate is a suitable emollient for a cosmetic composition. Croom also teaches that there is market demand for higher natural content and naturally derived emollients. (See [0311]).
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result is covered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
Every element of every claim is therefore taught in Lin, Croom and Barrett and the combination of these teachings into the claimed composition is also motivated. As described in the rejection above, it would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Lin sunscreen composition of an anhydrous dispersion of 50 wt% to 80 wt% untreated iron oxide and titanium dioxide particles in polyhydroxystearic acid to make the polyhydroxystearic acid greater than 98% biobased and to add 70-95 wt% of greater than 98% biobased heptyl undecylenate as an emollient in light of Croom’s teaching that heptyl undecylenate is a suitable emollient in a biobased sunscreen composition.
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Lin sunscreen composition of an anhydrous dispersion of 50 wt% to 80 wt% untreated iron oxide and titanium dioxide particles in polyhydroxystearic acid to make the formulation a water-in-oil emulsion in light of Barrett’s teachings that this is a suitable and effective formulation type for a sunscreen with untreated iron oxide and titanium dioxide.
Conclusion
Claims 25 and 26 are allowed. The remaining claims are rejected.
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 SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
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SARAH CHICKOS
Examiner
Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619