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 .
Formal Matters
Receipt of Applicant’s response dated 07/07/2026 is acknowledged.
Claims 1, 10-13, 15, 18-19, 27, 32, 34, 36, and 38-43 are pending.
Claims are 2-9, 14, 16-17, 20-26, 28-31, 33, 35, and 37 are canceled.
Claims 38-43 are new.
Claims 1, 10-13, 15, 18-19, 32, and 34 are amended.
Election/Restriction
Applicant’s election without traverse of Group I, now claims 1, 10-13, 32, 34, and 38-40, in the reply filed on 07/07/2026 is acknowledged.
Applicant has also elected the following without traverse in the reply filed on 07/07/2026:
C36 dimer acid as the species of the at least one di-carboxylic acid or tri-carboxylic acid;
Isostearic acid as the species of the at least one mono-carboxylic acid;
Diglycerol as the species of the at least one polyol;
Coco-caprylate/caprate as the species of the one or more solvents or emollients; and
Skin cream as the species of personal care formulation.
Claims 15, 18-19, 27, 36, and 41-43 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim 40 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species (i.e., Applicant has elected coco-caprylate/caprate not the combination of squalene and coco-caprylate/caprate) there being no allowable generic or linking claim.
Claims 1, 10-13, 32, 34, and 38-39 are under consideration in the instant Office action to the extent of the elected species, which based on the amendments to the claims are, the at least one di-carboxylic acid is C36 dimer acid, the at least one mono-carboxylic acid is isostearic acid, the at least one polyol is diglycerol, the at least one solvent is coco-caprylate/caprate, and the personal care formulation is a skin cream.
Information Disclosure Statement
The information disclosure statements (IDS) filed 08/05/2024, 10/01/2024, 12/09/2024, and 07/07/2026 have been considered by the Examiner. A signed copy of each IDS is included with the present Office Action. It is noted NPL4 cited in the IDS dated 12/09/2024 and NPL15 cited in the IDS dated 07/07/2026 are duplicative documents.
Specification
The abstract of the disclosure is objected to because “polyester elastomers, polyester elastomer compositions” in line 1 should be amended to “polyester elastomers and polyester elastomer compositions” for grammatical correctness.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 12 and 39 are objected to because in each claim, the parentheses around “gel fraction” should be removed in order to improve claim readability, i.e., “crosslinked polyester elastomer (gel fraction)” should be amended to “crosslinked polyester elastomer gel fraction”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 10-13, 32, 34, and 38-39 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
(a) Claim 1 recites the limitation "the di-carboxylic acid of formula (IA)" in line 8. There is insufficient antecedent basis for this limitation in the claim because claim 1 does not earlier recite ‘a di-carboxylic acid of formula (IA)’, however claim 1 earlier recites “at least one di-carboxylic acid” and earlier recites “a compound of formula (IA)”. Claims 10-13, 32, 34, and 38-39 are rejected for depending from claim 1. The Examiner suggests amending "the di-carboxylic acid of formula (IA)" in line 8 to “the compound of formula (IA)” in order to overcome this rejection. The Examiner suggests the aforementioned amendment instead of amending "the di-carboxylic acid of formula (IA)" in line 8 to “the at least one di-carboxylic acid” because amending to “the at least one di-carboxylic acid” would raise an issue of indefiniteness as to which scope the at least one di-carboxylic acid is limited to, i.e., it would be unclear whether the at least one di-carboxylic acid is limited to the recitation in lines 2-7 or limited to the recitation in lines 8-12.
(b) Claim 1 recites the limitation “the mono-carboxylic acid of formula (II)” in line 19. There is insufficient antecedent basis for this limitation in the claim because claim 1 does not earlier recite ‘a mono-carboxylic acid of formula (II)’, however claim 1 earlier recites “at least one mono-carboxylic acid” and earlier recites “a compound of formula (II)”. Claims 10-13, 32, 34, and 38-39 are rejected for depending from claim 1. The Examiner suggests amending "the mono-carboxylic acid of formula (II)" in line 19 to “the compound of formula (II)” in order to overcome this rejection. The Examiner suggests the aforementioned amendment instead of amending "the mono-carboxylic acid of formula (II)” in line 19 to “the at least one mono-carboxylic acid” because amending to “the at least one mono-carboxylic acid” would raise an issue of indefiniteness as to which scope the at least one mono-carboxylic acid is limited to, i.e., it would be unclear whether the at least one mono-carboxylic acid is limited to the recitation in lines 13-18 or limited to the recitation in lines 19-22.
(c) Claim 1 recites the limitation “the polyol of formula (III)” in line 29. There is insufficient antecedent basis for this limitation in the claim because claim 1 does not earlier recite ‘a polyol of formula (III)’, however claim 1 earlier recites “at least one polyol” and earlier recites “a compound of formula (III)”. Claims 10-13, 32, 34, and 38-39 are rejected for depending from claim 1. The Examiner suggests amending “the polyol of formula (III)” in line 29 to “the compound of formula (III)” in order to overcome this rejection. The Examiner suggests the aforementioned amendment instead of amending "the polyol of formula (III)” in line 29 to “the at least one polyol” because amending to “the at least one polyol” would raise an issue of indefiniteness as to which scope the at least one polyol is limited to, i.e., it would be unclear whether the at least one polyol is limited to the recitation in lines 23-28 or limited to the recitation in lines 29-34.
(d) Claim 1 is indefinite in the recitation of “wherein the crosslinked polyester elastomer in the polyester elastomer gel has a particle size (D50)” because it is unclear whether the limitation in the parentheses, i.e., “D50”, is an exemplary embodiment of the limitation preceding the parentheses, i.e., “particle size”, whether the limitation in the parentheses is a further limitation of the limitation preceding the parentheses, or whether something else is meant by the parentheticals. As written, one skilled in the art would not be reasonably apprised of the metes and bounds of the claims. Claims 10-13, 32, 34, and 38-39 are rejected for depending from claim 1.
(e) Claim 10 recites each of the limitations “mono-carboxylic acid” in line 2 and “polyol” in line 3. There is insufficient antecedent basis for each of these limitations in the claim because neither claim 10 nor claim 1 earlier recite ‘a mono-carboxylic acid’ or ‘a polyol’, but rather, claim 1 earlier recites “at least one mono-carboxylic acid” and “at least one polyol”. It is unclear whether ‘mono-carboxylic acid’ in claim 10 refers to just one of the at least one mono-carboxylic acid of claim 1, more than one of the at least one mono-carboxylic acid of claim 1, or all of the at least one mono-carboxylic acid of claim 1. It is unclear whether ‘polyol’ in claim 10 refers to just one of the at least one polyol of claim 1, more than one of the at least one polyol of claim 1, or all of the at least one polyol of claim 1.
(f) Claim 11 recites each of the limitations “di-carboxylic acid” in line 2 and “polyol” in line 3. There is insufficient antecedent basis for each of these limitations in the claim because neither claim 11 nor claim 1 earlier recite ‘a di-carboxylic acid’ or ‘a polyol’, but rather, claim 1 earlier recites “at least one di-carboxylic acid” and “at least one polyol”. It is unclear whether ‘di-carboxylic acid’ in claim 11 refers to just one of the at least one di-carboxylic acid of claim 1, more than one of the at least one di-carboxylic acid of claim 1, or all of the at least one di-carboxylic acid of claim 1. It is unclear whether ‘polyol’ in claim 11 refers to just one of the at least one polyol of claim 1, more than one of the at least one polyol of claim 1, or all of the at least one polyol of claim 1.
(g) Claim 38 recites the limitation “the mono-ester solvent of formula (V)” in line 8. There is insufficient antecedent basis for this limitation in the claim because neither claim 38 nor claim 1 earlier recite ‘a mono-ester solvent of formula (V)’, however claim 38 earlier recites “a mono-ester solvent” and “a compound of formula (V)”. The Examiner suggests amending “the mono-ester solvent of formula (V)” in line 8 to “the compound of formula (V)” in order to overcome this rejection. The Examiner suggests the aforementioned amendment instead of amending “the mono-ester solvent of formula (V)” in line 8 to “the mono-ester solvent” because amending to “the mono-ester solvent” would raise an issue of indefiniteness as to which scope the mono-ester solvent is limited to, i.e., it would be unclear whether the mono-ester solvent is limited to the recitation in lines 3-7 or limited to the recitation in lines 8-24.
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 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, 10-13, 32, 34, and 38-39 are rejected under 35 U.S.C. 103 as being unpatentable over Ricard (US 2008/0317693 A1, published 12/25/2008) in view of Pioffet et al (WO 2022/123184 A1, published 06/16/2022), as evidenced by IOI Oleochemical (“MIGLYOL® Coco810 – Dry Softness”).
Ricard teaches a composition containing a certain type of polyester and a branched hydrocarbon compound and teaches cosmetic use of the composition for caring for or making up the skin or lips (See entire document, e.g., Abstract, [0018]).
The cosmetic composition comprises between 0.1 and 70% by weight, with respect to the weight of the cosmetic composition, of at least one polyester capable of being obtained, or obtained, by reaction of at least one polyol comprising 3 to 6 hydroxyl groups, at least one nonaromatic branched monocarboxylic acid, at least one aromatic monocarboxylic acid, and at least one polycarboxylic acid comprising at least 2 carboxyl groups COOH and/or one cyclic anhydride of such a polycarboxylic acid, and from 1 to 90% by weight of a branched hydrocarbon compound (e.g., [0018]-[0024]).
The composition can be provided in any form including solid or more or less viscous cream (e.g., [0025]). The composition can be a stiff or soft anhydrous gel (e.g., [0025]).
Preferably, the polyol is chosen from glycerol, pentaerythritol, diglycerol, sorbitol and their mixtures (e.g., [0044]). Preferably the nonaromatic branched mono-carboxylic acid is isostearic acid (e.g., [0050], [0068]). Suitable polycarboxylic acids include fatty acid dimers, in particular C36 dimers (e.g., [0079]).
The composition advantageously comprises a nonvolatile oil, and the nonvolatile oil can be present from 1 to 90% by weight of the composition (e.g., [0204]). Suitable nonvolatile oils include Miglyol 810 (e.g., [0212]), which is coco-caprylate/caprate as evidenced by IOI Oleochemical (See “INCI” on left column of Page 5).
Ricard is silent regarding particle size of the polyester.
This deficiency is made up for in the teaching of Pioffet et al.
Pioffet et al teach a cosmetic composition comprising a crosslinked polyurethane elastomer gel and application of the composition to keratin materials, in particular the skin and/or the lips, for caring for and/or making up the keratin materials (See entire document, e.g., Abstract, Page 2 Second to last Par. of English translation). Pioffet et al teach formation of a concentrated elastomer gel in the form of a dispersion by micronizing the crosslinked polyurethane elastomer until a particle size preferably ranging from 1 to 100 microns is obtained (e.g. Page 4 Par. 7 of English translation).
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 provide a cosmetic composition as a stiff or soft anhydrous gel, formulated as a solid or more or less viscous cream, for caring for or making up the skin, comprising between 0.1 and 70% by weight of a polyester capable of being obtained, or obtained, by reaction of at least one polyol comprising 3 to 6 hydroxyl groups being diglycerol, at least one nonaromatic branched monocarboxylic acid being isostearic acid, at least one aromatic monocarboxylic acid, and at least one polycarboxylic acid comprising at least 2 carboxyl groups COOH and/or one cyclic anhydride of such a polycarboxylic acid being C36 dimer acid, from 1 to 90% by weight of a branched hydrocarbon compound, and from 1 to 90% by weight of a nonvolatile oil being Miglyol 810 (i.e., coco-caprylate/caprate), wherein percent by weight is with respect to the weight of the cosmetic composition, and wherein the polyester is micronized until a particle size ranging from 1 to 100 microns is obtained.
Not knowing what particle size of the polyester to use as Ricard is silent regarding this, one of ordinary skill in the art would have been motivated to look to the teaching of Pioffet et al and micronize the polyester of Ricard until a particle size ranging from 1 to 100 microns is obtained because Pioffet et al teach this particle size for the formation of a concentrated elastomer gel and there would have been a reasonable expectation of success because of the similarity in the cosmetic compositions of Ricard and Pioffet et al, i.e., each teach a cosmetic composition comprising a crosslinked polyurethane elastomer/polyester gel and the application of the composition to keratin materials being the skin and/or the lips, for caring for and/or making up the keratin materials.
Regarding the ranges required by the instant claims, a prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)).
Regarding instant claim 10, isostearic acid has one carboxylic acid functional group and diglycerol has four hydroxyl functional groups, and therefore, the molar ratio of carboxylic acid functional groups of isostearic acid to hydroxyl functional groups of diglycerol is 1:4. Regarding instant claim 11, C36 dimer acid has two carboxylic acid functional groups and diglycerol has four hydroxyl functional groups, and therefore, the molar ratio of carboxylic acid functional groups of C36 dimer acid to hydroxyl functional groups of diglycerol is 1:2.
Regarding the requirement of instant claim 1 that the reaction product be a crosslinked polyester elastomer, because the polyester in the modified composition of Ricard in view of Pioffet et al is the same as the reaction product of instant claim 1, the polyester in the modified composition of Ricard in view of Pioffet et al necessarily is a crosslinked polyester elastomer. Regarding the requirements of instant claims 12-13, 32, and 39, because the modified composition of Ricard in view of Pioffet et al is the same as the polyester elastomer gel of the instant claim 1, the modified composition of Ricard in view of Pioffet et al necessarily has the properties recited in each of instant claims 12-13, 32, and 39. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. "Products of identical chemical composition cannot have mutually exclusive properties" (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not" (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). In addition, the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether the crosslinked polyester elastomer gel fraction, swelling ratio, storage modulus, and loss modulus of Applicant's polyester elastomer gel differs, and if so to what extent, from that of the modified composition of Ricard in view of Pioffet et al, and therefore, the burden of establishing non-obviousness by objective evidence is shifted to Applicant.
Thus, the modified composition of Ricard in view of Pioffet et al renders obvious instant claims 1, 10-13, 32, 34, and 38-39.
Conclusion
No claims are allowable.
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/K.E.O./Examiner, Art Unit 1619
/NICOLE P BABSON/Primary Examiner, Art Unit 1619
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