DETAILED ACTION
Status of the Claims
Claims 1-6, 9-14 and 16-23 are pending in the instant application. Claims 4-6 and 19-23 have been withdrawn based upon Restriction/Election as discussed below. Claims 1-3, 9-14 and 16-18 are being examined on the merits in the instant application.
Advisory Notice
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant is advised that withdrawn claim 4 depending from claim 21 would be objected to as not being in proper dependent form “referencing a claim previously set forth” (MPEP 608.01(n)(III)). Applicant should simply cancel claim 4 and add a new claim after claim 21, and point to previously presented claim 4 for support thereof.
Restriction/Election
Applicant's election without traverse of Group I drawn to composition(s) of matter, currently claims 1-6, 9-14, 16-18 and 21-23, in the reply filed on 04/03/2026 is acknowledged.
Applicants have elected the following species in the reply filed 04/03/2026: (a) a species of an ester derivative of a glucan is α-glucan, wherein at least about 50% of the glycosidic linkages of the α-glucan are α-1,3-linkages (readable on instant claims 1-3, 9-14 and 16-18)
The requirement is deemed proper and is therefore made FINAL.
Claims 4-6 and 19-23 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/03/2026.
Priority
The instant Application is a 371 of PCT/US2022/036643 filed 07/11/2022 which PCT claims priority to U.S. Provisional Application No. 63/221,034 filed 07/13/2021.
The U.S. effective filing date has been determined to be 07/13/2021, the filing date of the U.S. Provisional Application No. 63/221,034.
Information Disclosure Statement
The information disclosure statement submitted on 04/08/2026 was filed before the mailing date of the first office action on the merits. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the Examiner.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 1-3, 9-14 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over DUBIEF (US 2003/0175230 A1; published September, 2003) in view of DENNES (US 2016/0311935 A1; published October 2016); and GRANO (WO 00/1566 A1; published March, 2000; of record as cited by Applicant on 04/08/2026).
Applicants Claims
Applicant claims a composition comprising an ester derivative of a glucan, wherein the glucan has a degree of substitution (DoS) of about 0.005 to about 3.0 with at least one cationic organic group that is ester-linked to the glucan, wherein the glucan has a weight-average degree of polymerization (DPw) of at least 6, wherein the glucan is selected from: (i) an alpha-glucan, wherein at least about 50% of the glycosidic linkages of the alpha-glucan are alpha-1,3 linkages, (ii) an alpha-glucan, wherein at least about 50% of the glycosidic linkages of the alpha-glucan are alpha-1,6 linkages, or (iii)a beta-glucan, wherein at least about 50% of the glycosidic linkages of the beta-glucan are beta-1,3 linkages (instant claim 1).
Determination of the scope
and content of the prior art (MPEP 2141.01)
DUBIEF teaches starch esters of betaine (see whole document) for the cosmetic treatment of keritinous materials ([0001]). DUBIEF teaches the betaine structure as follows:
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([0021])(instant claim 1, at least one cationic organic group; instant claims 11-14).
DUBIEF teaches that: “The starch molecules may be derived from any plant source of starch such as, in particular corn, potato, oats, rice, tapioca, sorghum, barley or wheat. The starch is preferably derived from potato.” ([0023]).
DUBIEF teaches that: “The starch betaines which can be used according to the present invention, and their preparation, are described in particular in application WO 00/15669 and in the article "Preparation of starch betaine: a novel cationic starch derivative". They are prepared from natural products, namely a starch and a betaine as described above.” ([0024]). The examiner cites WO 00/15669 (GRANO) as teaching that: “Quaternary starches are produced by forming ether or ester bonds between the hydroxyl groups of the starch structure and the cationizing reagent.” (p. 1, lines 16-18). GRANO further teaches that: “The starch can be any natural starch, for example tuber-related starch ( e.g. potato), root starch ( e.g. .. tapioca, arrowroot or sweet potato), or cereal starch ( e.g. barley, wheat, rice or durra). In esterification, also waxy starches, modified starches, hydrolyzed or oxidized starches, acid-treated starches or even other long-chained polysaccharides can be used.” (p. 3, lines 1-5).
DUBIEF teaches that: “The compositions may be provided in the form of fluid or thickened liquids, gels, creams, foams, waxes, W/O, O/W emulsions or multiple emulsions.” ([0206])(instant claim 16). And that: “They may be used as shampoos, rinse-out or leave in treatments, deep treatment masks, lotions or creams for treating the scalp, mascaras, makeup removers, products for dyeing the hair or coloring the skin, sun protection products, and the like.” ([0207])(instant claim 17). And further that: “The composition according to the invention may comprise, in addition, anionic, nonionic, amphoteric and/or zwitterionic surfactants well known in the art” ([0050])(instant claim 18).
Ascertainment of the difference between
the prior art and the claims (MPEP 2141.02)
The difference between the rejected claims and the teachings of DUBIEF/GRANO is that DUBIEF/GRANO does not expressly teach the polysaccharide is a polysaccharide (or a glucan) that has a degree of substitution (DoS) of about 0.005 to about 3.0 with at least one cationic organic group that is ester-linked to the glucan, wherein the glucan has a weight-average degree of polymerization (DPw) of at least 6, wherein the glucan is selected from: (i) an alpha-glucan, wherein at least about 50% of the glycosidic linkages of the alpha-glucan are alpha-1,3 linkages.
DENNES teaches “Poly alpha-1,3-glucan ether compounds are disclosed herein comprising positively charged organic groups. The degree of substitution of the ether compounds is about 0.05 to about 3.0. Also disclosed are methods of producing poly alpha-1,3-glucan ether compounds having positively charged organic groups, as well as methods of using these ether compounds for increasing the viscosity of a aqueous compositions. Hydrocolloids and aqueous solutions comprising the ether compounds are also disclosed.” (title, abstract, see whole document, [0002]).
DENNES teaches that: “Driven by a desire to find new structural polysaccharides using enzymatic syntheses or genetic engineering of microorganisms or plant hosts, researchers have discovered polysaccharides that are biodegradable, and that can be made economically from renewable resource-based feedstocks. One such polysaccharide is poly alpha-1,3-glucan, a glucan polymer characterized by having alpha-1,3-glycosidic linkages. This polymer has been isolated by contacting an aqueous solution of sucrose with a glucosyltransferase enzyme isolated from Streptococcus salivarius” ([0003]). And that: “U.S. Pat. No. 7,000,000 disclosed the preparation of a polysaccharide fiber comprising hexose units, wherein at least 50% of the hexose units within the polymer were linked via alpha-1,3-glycosidic linkages using an S. Salivarius gtfJ enzyme.” ([0004]).
DENNIS teaches that the composition comprises poly alpha-1,3-glucan ether compounds wherein “(i) n is at least 6, […] (iii) the compound has a degree of substitution of about 0.05 to about 3.0” ([0006])(instant claim 1, “a glucan) that has a degree of substitution (DoS) of about 0.005 to about 3.0 with at least one cationic organic group that is ester-linked to the glucan, wherein the glucan has a weight-average degree of polymerization (DPw) of at least 6,”; instant claims 9-10,). DENNES further teaches the value of “n” in the glucan formula can range from at least 6 to 4000 ([0067]), and the molecular weight (Mn or Mw) ranges from at least about 1000 to about 600,000 ([0069]). The instant Specification indicates the DPw is calculated by dividing the molecular weight by 162 (the molecular weight of an unsubstituted glucan unit – [0031] of the Published Application) where 1000/162 = 6.17 and 600,000/162 = 3703 (instant claim 1 – DPw of at least 6).
DENNIS teaches that: “The percentage of glycosidic linkages between the glucose monomer units of poly alpha-1,3-glucan used to prepare poly alpha-1,3-glucan ether compounds herein that are alpha-1,3 is at least about 50%, 60%, 70%, 80%, 90%, […].” ([0022])(instant claim 1, item (i)).
DENNIS teaches their positively charged organic groups include structures consistent with those of DUBIEF ([0031] through [0034]).
Finding of prima facie obviousness
Rationale and Motivation (MPEP 2142-2143)
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 substitute the starch used in DUBIEF, as suggested by GRANO (“or even other long-chained polysaccharides can be used”) and DENNIS, and produce the instantly claimed invention because esters and ethers are considered obvious variants in the art to which the invention pertains.
A prima face case of obviousness based upon a substitution rationale requires (1) a finding of fact that the prior art contained a product which differed from the claimed product by the substitution of some components with other components; (2) a finding of fact that the substituted components and their functions were known in the art; (3) a finding that one of ordinary skill in the art could have substituted one known element for another, and the results of the substitution would have been predictable; and (4) whatever additional findings based upon the Graham factual inquiries may be necessary, in view of the case under consideration, to explain a conclusion of obviousness (MPEP § 2143-B). In the instant case DUBIEF teaches starch-betaine esters where starch is a polysaccharide, and GRANO teaching similar starch-betaine esters suggest “other long-chained polysaccharides can be used” and DENNIS teaches other long-chained polysaccharides used for betaine ethers, however, GRANO makes clear that etherification and esterification was well-known for substitution of starches which are polysaccharides, and therefore one of ordinary skill in the art could have substituted one known element (starch) for another the polysaccharide of DENNIS, and the results of the substitution would have been predictably resulted in a polysaccharide-betaine ester suitable for a personal care composition. The examiner further notes that the polysaccharides described by DENNIS are enzyme derived allowing for control of the glycoside linkages (e.g. 90% + alpha-1,3-linkages) as described, for example, in U.S. Pat. No. 7,000,000.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
Conclusion
Claims 1-3, 9-14 and 16-18 are pending and have been examined on the merits. Claims 1-3, 9-14 and 16-18 are rejected under 35 U.S.C. 103. No claims allowed at this time.
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/IVAN A GREENE/Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
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