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 .
Status of the Claims
Claims 1-24 are pending and under current examination. The 25-page preliminary amendment is the document in the file wrapper containing the claims under examination.
Specification
The substitute specification filed 4/27/2026 is entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/25/2024 has been considered by the examiner.
Claim Objections
Claims 2-5 are objected to because of the following informalities: the claims must be in the form of a complete and grammatically correct sentence; the claims are replete with apparent errors pertaining to punctuation and/or strikethrough typographical errors. For instance, claim 2 should end in a period. For instance, claim 3 should be in the form of a grammatically correct sentence; for instance, what is the relationship between the clause “in which polymer units (A), (B) and (C)” in line 8 and the text of claim 10? Also, claim 3 cannot end in a semicolon and a period and form a grammatically correct sentence. Claim 4 needs to end in a period and include both open and closing parentheses for instance for the “C” item in line 20; claim 5 is objected to in kind.
Claims 13 and 14 require correct presentation in the form of a sentence with tables and/or chemical formula illustrations properly noted. Claim 16 appears a grammatically incorrect or incomplete sentence. Claim 17 includes a formula which is both unclear to read and does not appear to reference any component of the claim language and is not included in the claim in the form of a sentence.
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 1-24 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.
The claims and particularly claims 1-5 or claims requiring limitations of claim 1 are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be replete with grammatical and idiomatic and/or typographical or punctuation-related errors. Appropriate clarification is required. For instance, in claim 1 what is “A composition C1’’”? Is C1’ a part or a whole or the same or separate entity of the claimed composition? The phraseology of the hydrocarbon-chain optional substituents is awkward; typically articles are used preceding each item in a list. Moreover, regarding claim 1, what are the metes and bounds of the term “crystallizable at 25 degrees Celsius and at atmospheric pressure”? Crystallization requires multiple parameters beyond temperature and pressure, and the broad terms of the claim are further unclear as to what is actually required for crystallization.
In claim 10, A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation a linear or branched alkyl, and the claim also recites “preferably” a linear C1-C8 alkyl, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Similarly, claim 21 recites broader and narrower ranges before and after the recitation of “preferably” in line 4.
Claims 13 and 14 recite what appears to be incomplete Markush type language with regard to the (A) repeating units. It appears that the PHA copolymer repeating unit (A) is to be selected from those including the named isomers, acid or base salts, and solvates thereof and not literally a combination of all of these as stated. Claim 13 also needs to be recited in the form of a sentence particularly including a conjunction between the last two items in a list. Claim 14 includes figures and tables not properly integrated into the claim in the form of a sentence; appropriate clarification is required. Moreover, the scanned figures on page 20 of the claim set are unclear and will require clear submission prior to printing for allowance; specifically, the subscripts in chemical formulas are unclear and difficult to read.
Claims 16-18 recite the limitation "b) the crystallizable fatty substance(s)" in line 2. There is insufficient antecedent basis for this limitation in the claim. Also, in claim 16, the Markush type language appears to be incomplete and/or incorrect; the claim should be in the form of a sentence with appropriate punctuation as well as a conjunction between any final two items in a list. Claim 17 includes a formula which is both unclear to read and does not appear to reference any component of the claim language and is not included in the claim in the form of a sentence.
Further still, any dependent claim reciting substituents (i.e., claim 14) broader than the scope of claim 1 are interpreted to require all limitations of claim 1 from which said dependent claim depends.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the specific PHA copolymers as in the examples disclosed in the specification as filed, it is not apparent that any nonobvious distinction over the prior art’s obvious alternatives has been shown across the full scope of nearly unlimited copolymers claimed. Accordingly, the specification as filed does not reasonably provide enablement for a composition across the entire scope of copolymers and substituents thereof as claimed. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. For instance, please see distinction of examples 1 and 12 relative to the polymer of example 35 as disclosed in the specification as filed.
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 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 1-24 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/128050A1 (Portal et al., hereafter “Portal”).
The claims are drawn to a composition as detailed in claim 1 and as further specified in the dependent claims.
Portal teaches cosmetic compositions comprising a polyhydroxyalkanoate in an oily medium. Portal’s abstract details the copolymer units including and/or overlapping in scope with those components instantly claimed. Portal teaches compositions comprising polyhydroxyalkanoate copolymer containing units A-C corresponding to instant claim 1 wherein R1=5-9 carbon atoms, R2=3 carbon atoms, and R3=4 carbon atoms. Portal’s compositions include solid fatty components such as isododecane.
Because Portal does not limit its compositions to the polyhydroxyalkanoate copolymer which is necessarily as instantly claimed, this rejection is made using obviousness rationale. It would have been prima facie obvious to one of ordinary skill in the art at time the invention was filed to select from the breadth of polyhydroxyalkanoate copolymer units A-C as taught by Portal, components having carbon chain lengths within those instantly claimed, with a reasonable expectation of success. One would have been motivated to do so as part of routine optimization within the parameters of Portal’s disclosure as a whole. Moreover, and further regarding claims 4-6, 8-12, and 16-21, one also would have reasonably expected success from making additive and combining copolymer components taught by Portal into a single embodiment such as having four (A-D) units or another combination of these known elements to be used in a product and method for the very same purpose as taught by Portal.
Further regarding claim 18-20, Portal teaches for instance oils and esters of fatty acid esters or alcohols (see page 6) which appear to function the same or substantially the same for instance as in claims 18 absent further definition of what constitutes “crystallizable” and within the range instantly claimed (see fatty acid as in Portal Example 1).
As to claim 21, Portal teaches for instance ethanol in an amount less than 70% of the total composition (see Portal claim 14 for instance).
As to claim 22, Portal teaches colorant inclusion (see [0036]).
As to claims 23 and 24, Portal teaches application to keratin as a mascara or a foundation for instance (see [0037]).
Conclusion
No claim is allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDREA B CONIGLIO whose telephone number is (571)270-1336. The examiner can normally be reached Monday - Thursday 7:00 a.m. - 5:30 p.m..
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/AUDREA B CONIGLIO/ Primary Examiner, Art Unit 1617
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