DETAILED ACTION
Status of Claims
Claims 1-22 are currently pending. Claims 1-7, 13-14 and 16-21 are currently under consideration and are the subject of this Office Action. This is the first Office Action on the merits of the claims. Non-elected claims 8-12, 15 and 22 are withdrawn from consideration. 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.
Election/Restrictions
Applicant’s election of the claims of Group I (claims 1-7, 13, 16-21) in the response filed on November 28, 2025 (to the October 01, 2025 Requirement for Restriction) is acknowledged. Claim 14 has been placed in elected Group I for examination as being drawn to the elected product group. In response to applicant’s election, the claims of Group II (claims 8-12) and Group III (claims 15 and 22) are withdrawn from further consideration pursuant to 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant has elected the claims of Group I with traverse. The traverse is based on applicant’s argument:
The Examiner alleges that the groups lack unity of invention under PCT Rule 13.1 and 13.2. The Examiner stated that the common technical feature, the mixture composition, cannot be a special technical feature under PCT Rule 13.2 because the element lacks an inventive step in view of KAWA (WO 2011/000488 A1), and concluded that, because the technical feature is not a contribution over the art, the claims lack unity. However, the Examiner does not identify the special technical feature contributed by each invention or provide the analysis required under MPEP § 1893.03(d). The Examiner bears the burden to show that the common technical feature does not make a contribution over the cited art and to explain why separate examination is required. That burden has not been met.
The product in Group I, the process for preparing the same mixture composition in Group II, and the use of that mixture composition in Group III are technically linked. Examination of one would not impose a serious burden when examining the others, and the Examiner has not shown that the claimed groups differ in a manner that would justify separate examination.
11/28/2025 Remarks, p. 2, par. 3-4, cont. on p. 3. In response: since the claims drawn to the instant composition are not patentable over GRAVES (US 2,109,943) and KAWA (WO 2011/000488 A1), as discussed below), restriction is still deemed proper. Further, the establishment of burden on the Office applies to US cases only. The instant application is a national stage entry of an international application under 35 U.S.C. § 371. As a result, lack of unity practice is observed for restriction purposes.
Accordingly, the October 01, 2025 Requirement for Restriction is made FINAL, and claims 1-7, 13-14 and 16-21 are examined as follows.
Claim Objections
The following claims are objected to because of the following informalities: Claim 13 is objected to because the claim depends on withdrawn claim 8 (i.e., claim 13 recites “[t]he ester composition obtainable by the process according to claim 8”). The claims should explicitly recite the process steps in order to be a proper product-by-process claim.
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, 14 and 16-21 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 mixture composition, comprising:
a first alkyl carboxylate group of the general formula (Ia)
PNG
media_image1.png
60
168
media_image1.png
Greyscale
general formula (Ia),
and
a second alkyl carboxylate group of the general formula (Ib)
PNG
media_image2.png
61
168
media_image2.png
Greyscale
general formula (Ib),
with
R1a and R1b selected from the group consisting of saturated or unsaturated, linear or branched, optionally hydroxy-substituted, hydrocarbon acyl radicals exhibiting from 6 to 30 carbon atoms,
R2a and R2b each selected from the group consisting of saturated or unsaturated, linear or branched, optionally hydroxy-substituted, hydrocarbon radicals exhibiting from 4 to 22 carbon atoms,
with the proviso
that R2a is different from R2b, and
that the alkyl carboxylates of the first group and of the second group in total are present in an amount of at least 55% by weight, the percentages by weight referring to all alkyl carboxylates present in the mixture composition,
wherein the ratio by weight of all alkyl carboxylates of the first group to all alkyl carboxylates of the second group is from 10.0:1.0 to 1.0:1.0.
wherein the placement of “optionally” in:
“R1a and R1b selected from the group consisting of saturated or unsaturated, linear or branched, optionally hydroxy-substituted, hydrocarbon acyl radicals exhibiting from 6 to 30 carbon atoms,
R2a and R2b each selected from the group consisting of saturated or unsaturated, linear or branched, optionally hydroxy-substituted, hydrocarbon radicals exhibiting from 4 to 22 carbon atoms,”
renders the metes and bounds of the claim indefinite because it is unclear whether the limitations following the phrase (particularly the “hydrocarbon acyl radicals exhibiting from 6 to 30 carbon atoms” pertaining to “R1a and R1b,” and “R2a and R2b” pertaining to “hydrocarbon radicals exhibiting from 4 to 22 carbon atoms”) are part of the claimed invention. In this respect, examiner suggests amending claim 1 to read:
“R1a and R1b are each hydrocarbon acyl radicals exhibiting from 6 to 30 carbon atoms, and areand/or optionally hydroxy-substituted
R2a and R2b are each hydrocarbon radicals exhibiting from 4 to 22 carbon atoms, and areand/or optionally hydroxy-substituted
Subsequent claims 2-7, 13-14 and 16-21 depend on claim 1 and are thus, indefinite as well.
B. Claim 18 is drawn to:
18. ([…]): The mixture composition according to claim 4, wherein the carbon atoms are mono and diunsaturated.
wherein the recitation, “the carbon atoms,” it is unclear as to whether the claim refers to “R1a and R1b” in claims 1 and 4, “R2a and R2b” in claim 1, or some combination thereof. 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).
Further clarification is required.
Claim Rejections – 35 U.S.C. § 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.
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 pre-AIA 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.
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 C.F.R. § 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 1-6, 13 and 16-20 are rejected under 35 U.S.C. § 103 as being unpatentable over GRAVES (US 2,109,943, Issued Mar. 1, 1938; hereinafter, “Graves”).
Graves is directed to:
Esters of unsaturated aliphatic monocarboxylic acids
This invention relates to esters, and more particularly to the esters of polyunsaturated aliphatic monocarboxylic acids with monohydric alcohols of 12 to 14 carbon atoms.
Graves, title and col. 1, ln. 1-4. In this regard, Graves discloses claim embodiments directed to esters of a saturated monohydric straight chain primary alcohol of 12 to 14 carbon atoms inclusive with a polyunsaturated aliphatic monocarboxylic acid of the class consisting of linoleic and eleostearic acids:
6. An ester of a saturated monohydric straight chain primary alcohol of 12 to 14 carbon atoms inclusive with a polyunsaturated aliphatic monocarboxylic acid of the class consisting of linoleic and eleostearic acids.
7. A linoleic acid ester of a saturated monohydric straight chain primary alcohol of 12 to 14 carbon atoms inclusive.
8. An eleostearic acid ester of a saturated monohydric straight chain primary alcohol of 12 to 14 carbon atoms.
9. Dodecyl linoleate.
10. Dodecyl eleostearate.
Graves, claims 6-10.
Regarding independent claim 1 and the requirements:
1. ([…]): A mixture composition, comprising:
a first alkyl carboxylate group of the general formula (Ia)
PNG
media_image1.png
60
168
media_image1.png
Greyscale
general formula (Ia),
and
a second alkyl carboxylate group of the general formula (Ib)
PNG
media_image2.png
61
168
media_image2.png
Greyscale
general formula (Ib),
with
R1a and R1b selected from the group consisting of saturated or unsaturated, linear or branched, optionally hydroxy-substituted, hydrocarbon acyl radicals exhibiting from 6 to 30 carbon atoms,
R2a and R2b each selected from the group consisting of saturated or unsaturated, linear or branched, optionally hydroxy-substituted, hydrocarbon radicals exhibiting from 4 to 22 carbon atoms,
with the proviso
that R2a is different from R2b, and
that the alkyl carboxylates of the first group and of the second group in total are present in an amount of at least 55% by weight, the percentages by weight referring to all alkyl carboxylates present in the mixture composition,
wherein the ratio by weight of all alkyl carboxylates of the first group to all alkyl carboxylates of the second group is from 10.0:1.0 to 1.0:1.0.
Graves clearly teaches esters of a saturated monohydric straight chain primary alcohol of 12 to 14 carbon atoms inclusive with linoleic and eleostearic acids (Graves, claims 6-10), WHEREBY it is noted
“Dodecyl linoleate” (Graves, claim 9) is a “first alkyl carboxylate group of the general formula (Ia),” wherein
“R1a” is an unsaturated, linear acyl radical with 18 carbon atoms, and
“R2a” is a saturated, linear hydrocarbon radical with 12 carbon atoms; and
“A linoleic acid ester of a saturated monohydric straight chain primary alcohol of 12 to 14 carbon atoms inclusive” (Graves, claim 7) overlaps a “a second alkyl carboxylate group of the general formula (Ib),” wherein
“R1b” is an unsaturated, linear acyl radical with 18 carbon atoms, and
“R2b” is a saturated, linear hydrocarbon radical with 12 to 14 carbon atoms
thereby overlapping the proviso of claim 1, wherein “R2a is different from R2b,” as well as meeting the requirements of claims 3-4 for:
3. ([…]): The mixture composition according to claim 1, wherein R2a is a lauryl radical [i.e., 12 carbons] and R2b is a myristyl radical [i.e., a 14 carbon radical].
4. ([…]): The mixture composition according to claim 1, wherein R1a and R1b are selected from the group consisting of saturated or unsaturated, linear, hydrocarbon acyl radicals exhibiting 18 carbon atoms.
(see MPEP § 2144.05 (I) regarding the obviousness of prior art overlapping claimed numerical ranges).
Although Graves teaches “mixture of alcohols obtained by the carboxylic reduction of coconut oil,” which “consists largely of dodecyl alcohol (48%), and tetradecyl alcohol (18%),” i.e., a 2.4:1 ratio of a 12 to 14 carbon alkylester:
The alcohols included within the scope of the present invention are the monohydric saturated primary aliphatic alcohols of 12 to 14 carbon atoms including dodecyl alcohol, tetradecyl alcohol, and tridecanol-l. A particularly important source of dodecyl and tetradecyl alcohol is the mixture of alcohols obtained by the carboxylic reduction of coconut oil. The mono- 55 hydric alcohols obtainable in this way are a mixture, as shown in Example 3, but this mixture consists largely of dodecyl alcohol (48%), and tetradecyl alcohol (18%); these alcohols thus constituting the majority of the product. For descriptive purposes these alcohols may therefore be termed alcohols occurring to the extent of at least in the mixture of alcohols obtainable by the carboxylic reduction of an essentially saturated fatty oil, or the acids, simple alkylesters, etc., thereof, i. e., by the carboxylic reduction of the acyl radicals of an essentially saturated fatty oil such as coconut or palm kernel oils.
(Graves, p. 1, col. 2, ln. 48 to p. 2, col. 1, ln. 14), and contemplates ester mixtures and fractionation:
Mixtures of esters obtained, e. g., from the mixture of alcohols including octyl, decyl, dodecyl, tetradecyl, etc., alcohols obtainable by the carboxylic reduction of coconut oil by esterifying this mixture of alcohols with linoleic acid or by similar esterification of a suitable fraction of said mixture, are also included within the scope of the invention. […].
(Graves, p. 2, col. 1, ln. 15-22), Graves DOES NOT EXPRESSLY TEACH a mixture per the requirements of claim 1, wherein “the alkyl carboxylates of the first group and of the second group in total are present in an amount of at least 55% by weight, the percentages by weight referring to all alkyl carboxylates present in the mixture composition” and “wherein the ratio by weight of all alkyl carboxylates of the first group to all alkyl carboxylates of the second group is from 10.0:1.0 to 1.0:1.0,” as well as the requirements of claims 5-6, 16-17 and 19-20 for:
5. ([…]): The mixture composition according to claim 3, wherein the alkyl carboxylates of the first group and of the second group are present in total in an amount of 70% by weight to 99% by weight, the percentages by weight referring to all alkyl carboxylates present in the mixture composition.
6. ([…]): The mixture composition according to claim 3, wherein the alkyl carboxylates of the second group are present in an amount of 15% by weight to 35% by weight, the percentages by weight referring to all alkyl carboxylates present in the mixture composition.
[…]
16. ([…]): The mixture composition according to claim 1, wherein the alkyl carboxylates of the first group and of the second group in total are present in an amount of at least 80% by weight.
17. ([…]): The mixture composition according to claim 1, wherein ratio by weight of all alkyl carboxylates of the first group to all alkyl carboxylates of the second group is 3.5:1.0 to 2.5:1.0.
[…]
19. ([…]): The mixture composition according to claim 5, wherein the alkyl carboxylates of the first group and of the second group are present in total in an amount 85% by weight to 95% by weight.
20. ([…]): The mixture composition according to claim 6, wherein the alkyl carboxylates of the second group are present in an amount of 20% by weight to 30% by weight.
which are well within the purview of the ordinarily skilled artisan per Graves broader disclosure. In this regard, it is noted that a reference is analyzed using its broadest teachings. MPEP § 2123 [R-5] states: “[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to obtain a mixture of fractions (Graves, col. 2, ln. 15-22) containing “Dodecyl linoleate” (Graves, claim 9) and some other linoleic acid ester of a “saturated monohydric straight chain primary alcohol of 12 to 14 carbon atoms inclusive,” e.g., 14 carbon atoms (Graves, claim 7) for at least a 2.4:1 ester ratio of a linoleic acid ester of a 12 carbon alcohol to a linoleic acid ester of a 14 carbon alcohol (Graves, p. 1, col. 2, ln. 48 to p. 2, col. 1, ln. 14), per Graves broader disclosure, in order to obtain a mixture of esters meeting the proportions of claims 5-6, 16-17 and 19-20. In this regard, it is noted that MPEP § 2144.05 (I), states, “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).”
Thus, Graves renders claims 1, 3-6, 16-17 and 19-20 obvious.
Regarding claim 2 and the requirements:
2. ([…]): The mixture composition according to claim 1, wherein the amount of R1a, R1b, R2a and R2b radicals in total, which exhibit an uneven number of carbon atoms, is less than or equal to 40% by weight, the percentages by weight referring to all R1a, R1b, R2a and R2b radicals present in the mixture composition.
Graves teaches a mixture of “Dodecyl linoleate” (Graves, claim 9) with “A linoleic acid ester of a saturated monohydric straight chain primary alcohol of 12 to 14 carbon atoms inclusive” (Graves, claim 7) for at least a 2.4:1 ester ratio of a linoleic acid [with 12 carbons] ester of a 12 carbon alcohol to a linoleic acid ester of a 14 carbon alcohol (Graves, p. 1, col. 2, ln. 48 to p. 2, col. 1, ln. 14), as discussed above for claim 1, wherein “the amount of R1a, R1b, R2a and R2b radicals in total, which exhibit an uneven number of carbon atoms” per claim 2 is zero, thereby meeting the further requirement of claim 2 for being “less than or equal to 40% by weight.”
Thus, Graves renders claim 2 obvious.
Regarding claim 13, it is noted that the requirements:
13. ([…]): The ester composition obtainable by the process according to claim 8.
are product-by-process limitations per the “process according to claim 8.” 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.” See MPEP § 2113. Nonetheless, Graves teaches “[m]ixtures of esters obtained, e. g., from the mixture of alcohols including octyl, decyl, dodecyl, tetradecyl, etc., alcohols obtainable by the carboxylic reduction of coconut oil by esterifying this mixture of alcohols with linoleic acid or by similar esterification of a suitable fraction of said mixture, are also included within the scope of the invention” (Graves, p. 2, col. 1, ln. 15-22), which relates to the “process according to claim 8,” it reasonably follows that Graves teaches the “ester composition” of claim 13.
Thus, Graves renders claim 13 obvious.
Regarding claim 18 and the requirements:
18. ([…]): The mixture composition according to claim 4, wherein the carbon atoms are mono and diunsaturated.
Graves teaches a mixture of “Dodecyl linoleate” (Graves, claim 9) with “A linoleic acid ester of a saturated monohydric straight chain primary alcohol of 12 to 14 carbon atoms inclusive” (Graves, claim 7), wherein the linoleic acid starting component and resulting “Dodecyl linoleate” are at least both “mono and diunsaturated,” thereby meeting the requirement of claim 18, pending further clarification.
Thus, Graves renders claim 18 obvious.
Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over GRAVES (US 2,109,943, Issued Mar. 1, 1938; hereinafter, “Graves”), as applied to claims 1-6, 13 and 16-20, above, and further in view of SODAMADE (Sodamade, A., et al., Fatty Acids Composition of Three Different Vegetable Oils (Soybean Oil, Groundnut Oil and Coconut Oil) by High-Performance Liquid Chromatography, Chem Mater. Res., 3 (2013) pp. 26-30; hereinafter, “Sodamade”).
The teachings of Graves, as set forth above, are hereby incorporated.
Although Graves teaches carboxylic hydrogenation of coconut oil, followed by salt-washing/distillation purifying steps for obtaining “various alcohol esters of beta eleostearic acid in which the dodecyl ester predominated”
Example 3.--Coconut alcohol esters of eleostearic
acid
Coconut oil was subjected to carboxylic hydrogenation and the resulting product was washed with water to remove water soluble materials. After drying in a suitable manner, such as with sodium sulfate, the resulting mixture of alcohols had a molecular weight of about 200. Fractionation of this mixture of alcohols indicated 20 that it had the following composition: Hexyl alcohol 4 parts, octyl alcohol 81 parts, decyl alcohol parts, dodecyl alcohol 390 parts, tetradecyl alcohol 160 parts, hexadecyl alcohol 115 parts, octadecyl alcohol 55 parts, eicosyl alcohol 15 parts. Two hundred parts by weight of the mixture of alcohols, 292 parts by weight of methyl beta eleostearate, 400 parts by weight of toluene, and 10 parts by weight of litharge were heated under a 4’ reflux column, the toluene-methanol binary being separated, until the temperature of the distilling liquid was constant at --110 C. The product was filtered and washed with salt water and the toluene removed by distillation. The residue was a yellow-colored viscous oil composed of the various alcohol esters of beta eleostearic acid in which the dodecyl ester predominated.
(Graves, p. 1, col. 2, ln. 11-38 Ex. 3), Graves DOES NOT EXPRESSLY TEACH the particular presence of esters obtained from palmitic acid and/or myristic acid, and fatty alcohols thereof, in order to meet the requirements of claim 7 for:
7. ([…]): The mixture composition according to claim 3, wherein the mixture composition contains lauryl palmitate and/or myristyl myristate in total in an amount of 0.5% by weight to 7.0% by weight, the percentages by weight referring to all alkyl carboxylates present in the mixture composition.
which would be well within the purview of the ordinarily skilled artisan.
Sodamade, for instance, is directed to:
Fatty Acids Composition of Three Different Vegetable Oils (Soybean Oil, Groundnut Oil and Coconut Oil) by High-Performance Liquid Chromatography
Abstract
Edible vegetable oil were extracted from three sources; soyabean, groundnut and coconut. These oils were processed for fatty acid analysis using high performance liquid chromatography. Three saturated fatty acid were present. Palmitic acid; (C16;O) range from 2.092% in coconut oil to 4.756% in groundnut oil, stearic acid (C16;O) range from 1.496% in soya bean oil to 12.075% in groundnut oil. Monounsaturated fatty acid was also obtained. Oleric acid (C18:1) range from 8.584% in coconut oil to 12.722% in groundnut oil. Polyunsaturated (essential) fatty acid identified was linoleic acid (C18:2 Omega-6) at concentration ranges of 5.654% in soyabean oil to 9.198% in groundnut oil. The result showed that the three samples are good sources of two essential fatty acid (lauric and palmitric acid). The predominant component of soyabean oil and coconut oil was myristic acid (C14:O) (41.039% and 33.544% respectively). The highest fatty acid component of groundnut oil is lauric acid (C12:O) at 14.567%.
(Sodamade, title & abstract), wherein coconut oil contains both palmitic acid and myristic acid relating to lauryl palmitate and/or myristyl myristate of claim 7.
In light of these teachings, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date to perform Graves carboxylic hydrogenation of coconut oil for obtaining “various alcohol esters of beta eleostearic acid” (Graves, p. 1, col. 2, ln. 11-38 Ex. 3) wherein some of the resulting esters would the products resulting from esterification of 12 to 14 carbon fatty alcohols (Graves, claims 6-10) with palmitic acid and myristic acid, present in the coconut oil per Sodamade (Sodamade, abstract), and fatty alcohols thereof per Graves’ “carboxylic hydrogenation” (Granves, p. 1, col. 2, ln. 14-26). One would have been motivated to do so with a reasonable expectation of success in order to optimize Graves purifying steps (Graves, p. 1, col. 2, ln. 11-38 Ex. 3) to reducing less desired esters, namely esters resulting from palmitic acid and myristic acid (Sadamade, abstract) to amounts approaching 0.5 wt.%, in order to enrich for polyunsaturated acid esters, namely dodecyl linoleate and dodecyl eleostearate (Graves, claims 6-10) based on factors such as availability of equipment, cost, and desired purity.
Thus, the prior art renders claim 7 obvious.
Claims 1-2, 13-14, 16-17 and 21 are rejected under 35 U.S.C. § 103 as being unpatentable over KAWA (WO 2011/000488 A1, Publ. Jan. 6, 2011; on 10/06/2023 IDS; hereinafter, “Kawa”).
Kawa is directed to:
Title: ESTER MIXTURES AND COMPOSITIONS COMPRISING SUCH ESTER MIXTURES
Abstract: The invention is directed to a mixture of esters according to the general formula (I), R1-C(=O)-O-R2, wherein R1 is an alkyl moiety with 7 to 9 carbon atoms and wherein R2 is a an alkyl moiety with 8 to 10 carbon atoms, wherein the mixture comprises 5 to 60 weight-% of ester of the general formula (I), wherein R1 is an alkyl moiety with 9 carbon atoms, based on the total amount of esters according to formula (I) and/or wherein the mixture comprises 5 to 60 weight-% of ester of the general formula (I), wherein R2 is an alkyl moiety with 10 carbon atoms, based on the total amount of esters according to formula (I). The invention is further directed to cosmetic and/or pharmaceutical compositions comprising such esters as well as to a process for the production of such esters.
(Kawa, title & abstract)
Regarding independent claim 1 and the requirements:
1. ([…]): A mixture composition, comprising:
a first alkyl carboxylate group of the general formula (Ia)
PNG
media_image1.png
60
168
media_image1.png
Greyscale
general formula (Ia),
and
a second alkyl carboxylate group of the general formula (Ib)
PNG
media_image2.png
61
168
media_image2.png
Greyscale
general formula (Ib),
with
R1a and R1b selected from the group consisting of saturated or unsaturated, linear or branched, optionally hydroxy-substituted, hydrocarbon acyl radicals exhibiting from 6 to 30 carbon atoms,
R2a and R2b each selected from the group consisting of saturated or unsaturated, linear or branched, optionally hydroxy-substituted, hydrocarbon radicals exhibiting from 4 to 22 carbon atoms,
with the proviso
that R2a is different from R2b, and
that the alkyl carboxylates of the first group and of the second group in total are present in an amount of at least 55% by weight, the percentages by weight referring to all alkyl carboxylates present in the mixture composition,
wherein the ratio by weight of all alkyl carboxylates of the first group to all alkyl carboxylates of the second group is from 10.0:1.0 to 1.0:1.0.
Kawa clearly teaches “a mixture of esters according to the general formula (I), R1-C(=O)-O-R2” (Kawa, abstract), WHEREBY it is noted
(1) the ester, “wherein R1 is an alkyl moiety with 7 to 9 carbon atoms and wherein R2 is a an alkyl moiety with 8 to 10 carbon atoms, wherein the mixture comprises 5 to 60 weight-% of ester of the general formula (I), wherein R1 is an alkyl moiety with 9 carbon atoms, based on the total amount of esters according to formula (I)” (Kawa, abstract) corresponds to a “first alkyl carboxylate group of the general formula (Ia)” of claim 1, and
(2) the ester, “wherein the mixture comprises 5 to 60 weight-% of ester of the general formula (I), wherein R2 is an alkyl moiety with 10 carbon atoms, based on the total amount of esters according to formula (I)” (Kawa, abstract) corresponds to a “second alkyl carboxylate group of the general formula (Ib)” of claim 1,
wherein ester (1) features “R2” being “an alkyl moiety with 8 to 10 carbon atoms” (Kawa, abstract), and ester (2) features “R2” “alkyl moiety with 10 carbon atoms” (Kawa, abstract), thereby overlapping the proviso of claim 1, wherein “R2a is different from R2b,” as well as the requirements of claim 2 for:
2. ([…]): The mixture composition according to claim 1, wherein the amount of R1a, R1b, R2a and R2b radicals in total, which exhibit an uneven number of carbon atoms, is less than or equal to 40% by weight, the percentages by weight referring to all R1a, R1b, R2a and R2b radicals present in the mixture composition.
wherein Kawa’s mixture contains both esters (1) and (2), each at 5 to 60 weight-% of ester of the general formula (I), thereby overlapping the requirements of claim 1, wherein “the alkyl carboxylates of the first group and of the second group in total are present in an amount of at least 55% by weight, the percentages by weight referring to all alkyl carboxylates present in the mixture composition” and “wherein the ratio by weight of all alkyl carboxylates of the first group to all alkyl carboxylates of the second group is from 10.0:1.0 to 1.0:1.0,” as well as the requirements of claims 16-17 for:
16. ([…]): The mixture composition according to claim 1, wherein the alkyl carboxylates of the first group and of the second group in total are present in an amount of at least 80% by weight.
17. ([…]): The mixture composition according to claim 1, wherein ratio by weight of all alkyl carboxylates of the first group to all alkyl carboxylates of the second group is 3.5:1.0 to 2.5:1.0.
However, Kawa DOES NOT EXPRESSLY TEACH a particular exemplary embodiment thereof in order to be anticipatory, and therefore is obvious. See MPEP § 2144.05 (I) regarding the obviousness of prior art overlapping claimed numerical ranges; see also MPEP § 2123 [R-5] regarding the obviousness of rearranging a reference according to the teachings of that same reference.
Thus, Kawa renders claims 1-2 and 16-17 obvious.
Regarding claim 13, it is noted that the requirements:
13. ([…]): The ester composition obtainable by the process according to claim 8.
are product-by-process limitations per the “process according to claim 8.” 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.” See MPEP § 2113. Since Kawa teaches a mixture of esters structurally similar to that obtained by the “process according to claim 8,” it reasonably follows that Kawa teaches the “ester composition” of claim 13.
Thus, Kawa renders claim 13 obvious.
Regarding claims 14 and 21 and the requirements:
14. ([…]): A cosmetic formulation, comprising:
the mixture composition according to claim 1.
[…]
21. ([…]): A cosmetic formulation, comprising:
the ester mixture composition according to claim 13.
Kawa teaches “a mixture of esters” that is “directed to cosmetic and/or pharmaceutical compositions comprising such esters” (Kawa, abstract)
Thus, Kawa renders claims 14 and 21 obvious.
Conclusion
Claims 1-7, 13-14 and 16-21 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