DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Summary
Claims 1-16 are pending in this office action. All pending claims are under examination in this application.
Priority
The current application was filed on December 20, 2023 is a 371 of PCT/EP2022/067059 filed June 22, 2022. The current application claims foreign priority to FR2106665 filed on June 23, 2021.
Information Disclosure Statement
Receipt of the Information Disclosure Statement dated December 20, 2023 is acknowledged. A signed copy of the document is attached to this office action.
Claim Objections
Claims 1-16 are objected to because of the following informalities:
Claims 1 and 6 are missing the structure for IIa. Additionally, the structures within formula I and II are not consistent (formula II is bolder; please align structures within the claim).
Dependent claims 2-5 and 7-16 fail to cure the defect of independent claim 1.
Claim 11 structures IIf and IIg do not have the same size and/or font type as IIa-e. Please make the structures consistent with the claim (bold / size of structures; align structures within the claim). Also, structure IIe is missing a hyphen.
Dependent claims 12-16 fail to cure the defects of claim 11.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Nabuurs et al. (WO2013/113938A1) in view of Dever (WO2016/087795A1) and Jang et al. (KR102011109B1).
[The Examiner is going to introduce each reference and then combine them where appropriate to reject the instant claims.]
1. Nabuurs et al.
Nabuurs et al. is considered the closest prior art as it teaches use of a polymer composition (see title). In addition, Nabuurs et al. disclose there is described use of bio-renewable copolymers in one or more of: in a topical and/or personal care composition, as a binder for toner, as an encapsulating agent for a colorant, as a hybrid colorant, as additive for sheet moulding compounds, as a plastic pigment, as a filler for composite materials such as concrete, as a filler for coatings and/or waxes; and/or as a spacer in a display; where the bio-renewable copolymer comprises (a) at least 8. 5 wt-% preferably >=20 wt-% of a higher itaconate diester (preferably dibutyl itaconate-DBI); (b) less than 23 wt-% acid monomer but also sufficient to have an acid value less than 150 mg KOH/g of polymer, (c) optionally with less than 50 wt-% of other itaconate monomers, and (d) optionally less than 77 wt-%of other monomers not (a) to (c). The DBI may be bio-renewable. One embodiment is an aqueous dispersion of vinyl sequential polymer of two phases: A) 40 to 90 wt-% of a vinyl polymer A with Tg from -50 to 30°C; and B) 10 to 60 wt-% of a vinyl polymer B with Tg from 50 to 130°C; where DBI is used to prepare A and/or B and polymer A has from 0.1 to 10 wt-% of at least one acid-functional olefinically unsaturated monomer (see abstract).
2. Dever
Dever teaches bio-sourced cross-linked poly(itaconate), compositions including same and uses thereof as a superabsorbent polymer (see title). Furthermore, Dever discloses that the invention relates to an entirely bio-sourced cross-linked poly(itaconate) produced by the polymerisation of a bio-sourced itaconate and a bio-sourced cross-linking agent. The invention also relates to a method for producing said cross-linked poly(itaconate), to a composition including same, and to the uses thereof as a superabsorbent polymer (see abstract).
3. Jang et al.
Jang et al. teach cosmetic composition with sodium polyitaconate and method for producing the same (see title). Additionally, Jang et al. disclose that in the present invention, a cosmetic composition containing sodium polyitaconate exhibits skin elasticity improving effect or skin pore tightening effect. In addition, the cosmetic composition of the present invention has the advantage of reducing stickiness when using or after use. In addition, the present invention can maintain stability without changing the formulation, such as phase separation, discoloration, and smell change. (see abstract).
Combination of Nabuurs et al., Dever, and Jang et al.
Regarding instant claim 1, Nabuurs et al., Dever, and Jang et al. teach a composition for thickening polar and/or apolar oils. The necessary citations of Nabuurs et al., Dever, and Jang et al. that pertain to instant claim 1 are presented in Table I.
Table I
Instant Claim 1
Nabuurs et al., Dever, and Jang et al. Citations
A composition (C) for thickening polar and/or apolar oils (H2), comprising at least one oil (H1) and a poly(itaconate) (P), the poly(itaconate) (P) consisting of:
Nabuurs et al. disclose a copolymer composed of itaconic acid (see page 12, line 10 within Nabuurs et al.) and itaconic acid derivatives (see title and abstract within Nabuurs et al.). Furthermore, Nabuurs et al. disclose the use of the copolymer composition within a topical and/or personal care composition (see claim 1 and abstract within Nabuurs et al.).
Nabuurs et al. does not specifically disclose use of an oil. However, Jang et al. disclose the use of an oil within the cosmetic arts.
Jang et al. disclose the cosmetic composition of the present invention may be a cosmetic composition generally
including an aqueous phase and an oil phase, and sodium polyitaconate can be significantly and appropriately homogenized in the cosmetic composition through the above method (see paragraph [0024] within Jang et al.).
Dever further supports the synthesis of itaconic acid derivatives (see claims 1-6 within Dever).
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Nabuurs et al. disclose the use of the monomer itaconic acid (see page 12, line 10 within Nabuurs et al.) and
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(see claim 1 within Nabuurs et al.). This meets the instant claim 1 limitation for structure IIa.
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See above for the relevant prior art.
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See above for the relevant prior art.
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See above for the relevant prior art.
Therefore, a skilled artisan (POSITA; person of ordinary skill in the art) would consult the disclosures of Nabuurs et al., Dever, and Jang et al. to teach all the elements of instant claim 1.
The remainder of the instant claims which are either directly or indirectly dependent on claim 1 are taught in full by the combination of Nabuurs et al., Dever, and Jang et al.
Regarding instant claim 2, Nabuurs et al., Dever, and Jang et al. teach wherein the composition further comprises between 20% and 80% by mass of oil (H1) and between 20% and 80% by mass of poly(itaconate) (P). Nabuurs et al. disclose a mass of at least 23% of the diester polyitaconate (P) (see claim 1 within Nabuurs et al.). In addition, Nabuurs et al. disclose the use of the copolymer composition within a topical and/or personal care composition (see claim 1 and abstract within Nabuurs et al.). Also, Nabuurs et al. disclose the optional use of component (d) at less than 77% which could be an oil (see claim 1 and abstract within Nabuurs et al.).
Furthermore, Jang et al. disclose the cosmetic composition of the present invention may be a cosmetic composition generally including an aqueous phase and an oil phase, and sodium polyitaconate can be significantly and appropriately homogenized in the cosmetic composition through the above method (see paragraph [0024] within Jang et al.).
Thus, based on the Jang et al. disclosure and component (d) within Nabuurs et al., a skilled artisan (POSITA) would be able to add between 20-80% by mass of an oil (H1). Additionally, a diester polyitaconate (P) disclosed by Nabuurs et al. of at least 23% by mass meets the instant claim 2 limitation of between 20% and 80% by mass of the copolymer.
Regarding instant claim 3, Nabuurs et al., Dever, and Jang et al. teach wherein wherein the oil (H1) is an oil which is in liquid form at a temperature of between 4°C and 45°C. Please see the discussion and citations within instant claim 2. A skilled artisan (POSITA) would be able to identify an oil that maintains its consistency between 4-45 °C within the cosmetic arts. Regarding instant claim 4, Nabuurs et al., Dever, and Jang et al. teach wherein wherein the oil H1 is a mineral oil or an oil of plant origin, or a mixture of these two types of oil. Nabuurs et al. disclose the use of bio-renewable materials such as plant-based oils (see page 57, lines 14-21 within Nabuurs et al.). Furthermore, a skilled artisan (POSITA) could expand this list within Nabuurs et al. to include the petroleum-based oil mineral oil.
Regarding instant claim 5, Nabuurs et al., Dever, and Jang et al. teach wherein the composition is topical. Nabuurs et al. disclose the use of the copolymer composition within a topical and/or personal care composition (see claim 1 and abstract within Nabuurs et al.).
Regarding instant claim 6, Nabuurs et al., Dever, and Jang et al. teach a process for preparing a thickening composition (C) as defined in instant claim 1. Nabuurs et al. disclose the preparation process in alignment with instant claim 6 (see claim 7 and page 18, line 26-). Please also see the discussion and citations within instant claim 1.
Regarding instant claim 7, Nabuurs et al., Dever, and Jang et al. teach wherein the above process further comprises a step of removing at least some of the oil (H1) included in composition (C). As necessary, a skilled artisan (POSITA) would be able to remove oil from the composition in order to ensure the preparation process affords the correct formulation.
Regarding instant claim 8, Nabuurs et al., Dever, and Jang et al. teach wherein the polymerization is performed at a temperature of between 40°C and 80°C. Nabuurs et al. disclose a conventional emulsion process involves dispersing the monomers in an aqueous medium and conducting polymerisation using a free-radical initiator (normally water soluble) and appropriate heating (e.g. 30 to 120 C) and agitation (see page 18, lines 33-35 within Nabuurs et al.).
Regarding instant claim 9, Nabuurs et al., Dever, and Jang et al. teach wherein in step b), a crosslinking monomer (AR) is added. Nabuurs et al. disclose the use of a crosslinking agent (see pages 24-25 bridging 24, lines 33-35 and 25, lines 1-7 within Nabuurs et al.). Additionally, Nabuurs et al. disclose the addition of the crosslinking agent at several points within the process (see page 34, lines 1-7 within Nabuurs et al.). Therefore, a skilled artisan (POSITA) could add the crosslinking agent at the correct stage of the process to cross-link at the appropriate time.
Regarding instant claim 10, Nabuurs et al., Dever, and Jang et al. teach wherein the crosslinking monomer (AR) is a diethylenic or polyethylenic crosslinking monomer notably chosen from ethylene glycol dimethacrylate, diethylene glycol diacrylate, ethylene glycol diacrylate, diallylurea, triallylamine, trimethylolpropane triacrylate and methylenebis(acrylamide). Dever disclose the crosslinking agent of the bisacrylamide type [see paragraph [0008] within Dever; methylenebis(acrylamide)]. In addition, Nabuurs et al. disclose the use of numerous other crosslinking agents (see pages 24 and 25 bridging 24, lines 33-35 and 25, lines 1-7 within Nabuurs et al.).
Regarding instant claim 11, Nabuurs et al., Dever, and Jang et al. teach wherein the desired mono- and/or oligoesters are synthesized. Nabuurs et al. disclose the following set of esters in claim 1 (within Nabuurs et al.):
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These analogues would be synthesized from the corresponding alcohols (II’d). The process steps listed within instant claim 11 are standard operating procedures for esterification.
Regarding instant claim 12, Nabuurs et al., Dever, and Jang et al. teach wherein substeps i) to iii) are performed at a temperature of between 120°C and 180°C. A skilled artisan (POSITA) would use standard organic chemistry techniques to ensure complete conversion to the desired ester and/or polymer under thermal conditions.
Regarding instant claim 13, Nabuurs et al., Dever, and Jang et al. teach wherein substep iii) is performed at a pressure of between 500 and 20 mbar. A skilled artisan (POSITA) would use standard organic chemistry techniques to ensure complete conversion to the desired ester and/or polymer under pressure. This is common within synthetic organic chemistry labs.
Regarding instant claim 14, Nabuurs et al., Dever, and Jang et al. teach wherein aid substep iii) lasts between 30 minutes and 10 hours. A skilled artisan (POSITA) would use standard organic chemistry techniques to ensure complete conversion to the desired ester depending on the overall concentration, catalyst for esterification, and reactants. Manipulating reaction time is common within synthetic organic chemistry labs.
Regarding instant claim 15, Nabuurs et al., Dever, and Jang et al. teach wherein in substep ii), the polymerization inhibitor is chosen from 1,4- benzoquinone, 2-tert-butyl-1,4-benzoquinone, phenothiazine, 6-tert-butyl-2,4-xylenol, copper(II) dibutyldithiocarbamate, 1,1-diphenyl-2-picrylhydrazyl, 2,6-di-tert-butyl-p- cresol, 4-tert-butylpyrocatechol, 2,6-di-tert-butylphenol, hydroquinone, tert-butylhydroquinone and 4-methoxyphenol. These are common polymerization inhibitors within synthetic organic chemistry labs and would be used by a skilled artisan (POSITA). Nabuurs et al. disclose the use of the polymerization inhibitor hydroquinone (see page 51, lines 15-22 within Nabuurs et al.).
Regarding instant claim 16, Nabuurs et al., Dever, and Jang et al. teach wherein in substep ii), the esterification catalyst is an acid chosen from sulfuric, hydrochloric, phosphoric, nitric, hypophosphorous, methanesulfonic, para-toluenesulfonic and trifluoromethanesulfonic acids and acidic ion-exchange resins. These acidic sources are common for esterification purposes and would be used by a skilled artisan (POSITA). Dever discloses the use of the catalyst, sulfuric acid (a catalyst (preferably sulfuric acid) is added dropwise to a mixture of itaconic acid and polyol (with an itaconic acid/diol molar ratio greater than 2); see paragraph [0052] within Dever).
Analogous Art
The Nabuurs et al., Dever, and Jang et al. references are directed to the same field of endeavor as the instant claims, that is, a composition for thickening polar and/or apolar oils.
Obviousness
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the polyitaconate disclosed by Nabuurs et al., using the teachings of Dever and Jang et al. to incorporate the necessary claim limitations.
Motivation to combine the Nabuurs et al. Dever, and Jang et al. references would rely on the common theme of a polyitaconate within these disclosures. The primary reference of Nabuurs et al. teach a majority of the instant claim limitations, however, the citation does not specifically disclose an oil within the cosmetic. The secondary references Dever and Jang et al. disclose support for many of the itaconic acid analogues, and the specific addition of an oil, respectively. These three citations have significant overlap regarding this general topic, making them analogous art.
Starting with Nabuurs et al., the skilled person only had to try the necessary claim limitations disclosed by Dever and Jang et al. The combination of Nabuurs et al., Dever, and Jang et al. would allow one to arrive at the present application without employing inventive skill. This combination of the polyitaconate taught by Nabuurs et al. along with the use of the necessary claim limitations taught by Dever and Jang et al. would allow a research and development scientist (POSITA) to develop the invention taught in the instant application.
It would have only required routine experimentation to modify the polyitaconate disclosed by Nabuurs et al. with the use of the necessary claim limitations taught by Dever and Jang et al. This combined modification would have led to an enhanced polyitaconate cosmetic that would be beneficial for consumers.
Double Patenting - Statutory
A rejection based on double patenting of the "same invention" type finds its support in the language of 35 U.S.C. 101 which states that "whoever invents or discovers any new and useful process... may obtain a patent therefor…"(Emphasis added). Thus, the term "same invention," in this context, means an invention drawn to identica I subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention, so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-16 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-16 of co-pending Application No. 18/572,733 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The claims at issue are identical and both encompass a copolymer thickening composition for thickening polar or apolar oils.
Conclusion
No claims are allowed.
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/JOHN W LIPPERT III/Examiner, Art Unit 1615 /Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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