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 .
Claim Rejections - 35 USC § 112
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 1-13 and 15-20 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 phrase “wherein the mixture of triglycerides comprises individual triglycerides comprising one or more ester containing fatty acids” in claim 1, line 2-3 is vague and indefinite as it is unclear how the triglyceride can have “one or more ester containing fatty acids” as all triglycerides have “three” fatty acids. A glyceride with one fatty acid is a monoglyceride and one with two fatty acids is a diglyceride.
The phrase “fatty acids are C8-C22 branched or straight chain fatty acids” in claim 1, lines 4-5 is vague and indefinite as it is unclear how the chains can be branched as all triglycerides have “straight chain fatty acids” like stearic acid (C18:0) and palmitic acid (C16:0).
The phrase “acid value between 0.5 and 20” in claim 4, line 2 is vague and indefinite as it is unclear what the units are.
The phrase “a hydroxyl value between 10 and 90” in claim 5, line 2 is vague and indefinite as it is unclear what the units are.
Claim 6 recites the limitation “the C8-C22 branched or straight chain fatty acid” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. The claims do not previously state “C8-C22 branched or straight chain fatty acid” but rather do state “ester containing fatty acids are C8-C22 branched or straight chain fatty acid esters”. Applicant is advised to consider amending the language to specify whether the language should refer to “fatty acid” or “ester” and set forth a proper antecedent basis.
The phrase “wherein the mixture of triglycerides comprises individual triglycerides comprising one or more ester containing fatty acids” in claim 8, line 2-4 is vague and indefinite as it is unclear how the triglyceride can have “one or more ester containing fatty acids” as all triglycerides have “three” fatty acids. A glyceride with one fatty acid is a monoglyceride and one with two fatty acids is a diglyceride.
The phrase “fatty acids are C8-C22 branched or straight chain fatty acids” in claim 8, lines 4-5 is vague and indefinite as it is unclear how the chains can be branched as all triglycerides have “straight chain fatty acids” like stearic acid (C18:0) and palmitic acid (C16:0).
The phrase “0.5% and 10%” in Claim 8, line 5 is vague and indefinite as it is unclear whether the % is weight % or something else.
The phrase “comprising between 50% and 100% weight percent of the triglyceride component” in claim 9, lines 1-2 is vague and indefinite as it is unclear how there can be 100% when claim 8 states “between 0.5% and 10% combined monoglycerides and diglycerides”. There cannot be 100% triglycerides and monoglycerides and diglycerides as the total percentage would be above 100%.
Claim 13 recites the limitation “the C8-C22 branched or straight chain fatty acid” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. The claims do not previously state “C8-C22 branched or straight chain fatty acid” but rather do state “ester containing fatty acids are C8-C22 branched or straight chain fatty acid esters”. Applicant is advised to consider amending the language to specify whether the language should refer to “fatty acid” or “ester” and set forth a proper antecedent basis.
The phrase “hydrogenated natural oil” in claim 17, lines 3-4 is vague and indefinite as it is unclear how to determine the difference between an oil to provide esterified fatty acid chains, like C18:0, and esterified fatty acid chains, like C18:0 that occur naturally as the structures are identical.
The phrase “hydrogenated soybean oil” in claim 18, line 2 is vague and indefinite as it is unclear how to determine the difference between an oil that is hydrogenated and not hydrogenated the fatty acid chains, like C18:0 are the same whether hydrogenated or not hydrogenated.
The phrase “hydrogenated soybean oil” in claim 18, line 2 is vague and indefinite as it is unclear how to determine the difference between an oil that is hydrogenated soybean oil and not hydrogenated soybean oil as the fatty acid chains, like C18:0 are the same whether the oil is soy or canola or sunflower or other oils.
The phrase “acid value between 0.5 and 20” in claim 20, line 2 is vague and indefinite as it is unclear what the units are.
Clarifications and/or correction required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 2, 4-9, 11, 13, 19 and 20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Tsubaki et al. (US 4,960,794).
Regarding claim 1, Tsubaki (‘794) teaches a personal care composition comprising a triglyceride component wherein: the triglyceride component comprises a mixture of triglycerides and wherein the mixture of triglycerides comprises individual triglycerides comprising one or more ester containing fatty acids and wherein the esters of the ester containing fatty acids are C8-C22 branched or straight chain fatty acid esters and wherein the triglyceride component has a drop melting point measured by AOCS Standard Procedure Cc 18-80 of between 30° and 70° C (See col. 5, l. 60-col. 6, l. 3 where the fatty acids esters can be single fatty acids like stearic acid (C18:0) and palmitic acid (C16:0) with corresponding properties.).
Regarding claim 2, Tsubaki (‘794) teaches comprising between 50% and 100% weight percent of the triglyceride component (See col. 5, l. 60-col. 6, l. 3 where the fatty acids esters can be single fatty acids (100%) like stearic acid (C18:0) and palmitic acid (C16:0).).
Regarding claim 4, Tsubaki (‘794) inherently teaches wherein the natural oil-glyceride component has an acid value between 0.5 and 20 (See col. 5, l. 60-col. 6, l. 3 where the composition is the same as claimed, including where the fatty acids esters can be single fatty acids like stearic acid (C18:0) and palmitic acid (C16:0) with corresponding properties.).
Regarding claim 5, Tsubaki (‘794) teaches wherein the triglyceride component has a hydroxyl value between 10 and 90 (See Table 1, 13.4.).
Regarding claim 6, Tsubaki (‘794) teaches wherein the C8-C22 branched or straight chain fatty acid comprises stearic acid, palmitic acid, or mixtures thereof (See col. 5, l. 60-col. 6, l. 3 where the fatty acids esters can be single fatty acids (100%) like stearic acid (C18:0) and palmitic acid (C16:0).).
Regarding claim 7, Tsubaki (‘794) teaches wherein the C8-C22 branched or straight chain fatty acid esters consist essentially of stearic acid and palmitic acid (See col. 5, l. 60-col. 6, l. 3 where the fatty acids esters can be single fatty acids (100%) like stearic acid (C18:0) and palmitic acid (C16:0).).
Regarding claim 8, Tsubaki (‘794) teaches a personal care composition comprising a triglyceride component wherein: the triglyceride component comprises a mixture of triglycerides and wherein the mixture of triglycerides comprises individual triglycerides comprising one or more ester containing fatty acids and wherein the esters of the ester containing fatty acids are C8-C22 branched or straight chain fatty acid esters and wherein the composition contains between 0.5% and 10% combined monoglycerides and diglycerides(See col. 5, l. 60-col. 6, l. 3 where the fatty acids esters can be single fatty acids like stearic acid (C18:0) and palmitic acid (C16:0) with corresponding properties, not more than 10% monoglycerides.).
Regarding claim 9, Tsubaki (‘794) teaches comprising between 50% and 100% weight percent of the triglyceride component (See col. 5, l. 60-col. 6, l. 3 where the fatty acids esters can be single fatty acids (100%) like stearic acid (C18:0) and palmitic acid (C16:0).).
Regarding claim 11, Tsubaki (‘794) teaches wherein the triglyceride component has an acid value between 0.5 and 20(See col. 5, l. 60-col. 6, l. 3 where the composition is the same as claimed, including where the fatty acids esters can be single fatty acids like stearic acid (C18:0) and palmitic acid (C16:0) with corresponding properties.).
Regarding claim 13, Tsubaki (‘794) teaches wherein the C8-C22 branched or straight chain fatty acid comprises stearic acid, palmitic acid, or mixtures thereof (See col. 5, l. 60-col. 6, l. 3 where the fatty acids esters can be single fatty acids like stearic acid (C18:0) and palmitic acid (C16:0).).
Regarding claim 19, Tsubaki (‘794) inherently teaches wherein the triglyceride component exhibits one or more rheological properties selected from a melt drop point of 35° C to 70° C, a cone penetration at 25° C of greater than 20 or from 20 to 100 or from 60 to 90 Dmm ( 1/10 of mm), kinetic viscosity at 100° C of 5 mm2/s to 35 mm mm2/s, a congealing point of 25° C to 45° C, or combinations thereof (See col. 5, l. 60-col. 6, l. 3 where the composition is the same as claimed, including where the fatty acids esters can be single fatty acids like stearic acid (C18:0) and palmitic acid (C16:0) with corresponding properties.).
Regarding claim 20, Tsubaki (‘794) teaches the composition include one or more of the following: (i) an acid value of less than 20.0; (ii) between 2% to 7 wt %; of combined monoglycerides and diglycerides, or (iii) an iodine value of less than 10.0 (See col. 5, l. 60-col. 6, l. 3 where the composition is the same as claimed, including where the acid value is about zero, monoglycerides and diglycerides below 10% which includes 2-7% and iodine values of stearic acid of about 1.0 or less.).
Claim(s) 1, 2, 6-9, 13, 19 and 20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Boeschen et al. (EP2724620).
Regarding claim 1, Boeschen (‘620) teaches an oleochemical composition comprising (a) 70-95 wt.% triglycerides, (b) 5-15 wt.% mono- and/or diglycerides, and (c) 0-15 wt.% fatty acids (abstract). In specific examples, formulations I, II and IV comprise 79.8% to 91.2% wt.% of triglycerides with mainly C18:0 (stearic) and C16:0 (palmitic) fatty acids, in addition to having 3.7% to 7.6% wt.% of combined mono- and di-glycerides, along with a melting point between 37 °C -55.7 °C (See Abs., para. 29, Table 2.).
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Regarding claim 2, Boeschen (‘620) teaches comprising between 50% and 100% weight percent of the triglyceride component (See para. 29, Table 2, 79.8% to 91.2% wt.% of triglycerides.).
Regarding claim 6, Boeschen (‘620) teaches wherein the C8-C22 branched or straight chain fatty acid comprises stearic acid, palmitic acid, or mixtures thereof (See Table 2, stearic acid (C18:0) and palmitic acid (C16:0).).
Regarding claim 8, Boeschen (‘620) teaches a personal care composition comprising a triglyceride component wherein: the triglyceride component comprises a mixture of triglycerides and wherein the mixture of triglycerides comprises individual triglycerides comprising one or more ester containing fatty acids and wherein the esters of the ester containing fatty acids are C8-C22 branched or straight chain fatty acid esters and wherein the composition contains between 0.5% and 10% combined monoglycerides and diglycerides (See Abs., para. 29, Table 2.).
Regarding claim 9, Boeschen (‘620) teaches comprising between 50% and 100% weight percent of the triglyceride component (See para. 29, Table 2, 79.8% to 91.2% wt.% of triglycerides.).
Regarding claim 13, Boeschen (‘620) teaches wherein the C8-C22 branched or straight chain fatty acid comprises stearic acid, palmitic acid, or mixtures thereof (See Table 2, stearic acid (C18:0) and palmitic acid (C16:0).).
Regarding claim 19, Boeschen (‘620) inherently teaches wherein the triglyceride component exhibits one or more rheological properties selected from a melt drop point of 35° C to 70° C, a cone penetration at 25° C of greater than 20 or from 20 to 100 or from 60 to 90 Dmm ( 1/10 of mm), kinetic viscosity at 100° C of 5 mm2/s to 35 mm mm2/s, a congealing point of 25° C to 45° C, or combinations thereof (See Abs., para. 29, Table 2 where the composition is the same as claimed, including where the fatty acids esters can be stearic acid (C18:0) and palmitic acid (C16:0) with corresponding properties.).
Regarding claim 20, Boeschen (‘620) teaches the composition include one or more of the following: (i) an acid value of less than 20.0; (ii) between 2% to 7 wt %; of combined monoglycerides and diglycerides, or (iii) an iodine value of less than 10.0 (See Abs., para. 29, Table 2 where the composition is the same as claimed, including where the acid value is about zero, monoglycerides and diglycerides being 3.2%, 3.7% iodine values of stearic acid of about 10.0 that is reflective of the significant presence of C16:0 and C18:0.).
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.
Claim(s) 3, 10, 12 and 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tsubaki et al. (US 4,960,794) in view of Ehara (US 2007/0110702).
Regarding claims 3 and 10, Tsubaki (‘794) teaches the composition discussed above, however, fails to expressly disclose between 1% and 50% weight percent of the triglyceride component.
Ehara (‘702) teaches liquid ester compositions that can be used as raw materials in cosmetic compositions such as makeup, skin care and hair care products; cosmetic compositions that contain the liquid ester compositions with between 1% and 50% weight percent of the triglyceride component (See paras. 102-104, 160, 25%, 3-90%.) wherein the cosmetic has lasting properties (See paras. 1, 58 and 108.).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide triglycerides in the amount as claimed to provide cosmetic has lasting properties. The selection of amounts would have been within the skill set of a person having ordinary skill in the art.
Regarding claims 12, 15-18, Tsubaki (‘794) teaches the composition discussed above, however, fails to expressly disclose the use, hydroxyl value and castor oil formulation.
Ehara (‘702) teaches liquid ester compositions that can be used as raw materials in cosmetic compositions such as makeup, skin care and hair care products; cosmetic compositions that contain the liquid ester compositions; and lasting agents of cosmetic film that contain the liquid ester compositions (See para. 1.), including ester oils (See para. 108.), such as tri (capryl/caprin/myristin/stearic acid) glyceride (See para. 58.).
Ehara (‘702) teaches that the liquid ester compositions of the present invention have a hydroxyl value of 10 to 160, preferably 20 to 140 and most preferably 25 to 95 (See para. 30.).
Ehara (‘702) teaches that the liquid ester compositions of the present invention preferably have an acid value of 10 or lower to decrease skin stimulation and enhance preservations stability (See para. 34.), which covers all elements of the claims.
Ehara (‘702) teaches that such compositions may include castor oils as liquid fats (See para. 52.), which intrinsically contains triglycerides, and thus covers all elements of present claims 11 and 20.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to incorporate the ester oil compositions disclosed by Ehara (‘702) into the triglyceride compositions of Tsubaki (‘794) in order to obtain cosmetically suitable lipid-based compositions having controlled acidic values, emollient properties, and improved stability for cosmetic formulations. Tsubaki et al. teaches stabilized triglyceride compositions suitable for use as base materials for cosmetic or medicinal preparations but does not expressly disclose the recited acid value ranges or castor oil-based triglycerides.
Ehara (‘702) teaches liquid ester compositions suitable for cosmetic products, including triglycerides and ester oils, and further teaches such compositions to have acid values that overlap with those claimed to decrease skin stimulation and enhance preservation stability in addition to adding castor oil, a well-known cosmetic emollient composed of triglycerides. Therefore, a person of ordinary skill in the art would have been motivated to incorporate the acid value and castor oil teachings of Ehara (‘702) into the compositions of Tsubaki (‘794) in order to optimize formulation properties such as stability, skin stimulation, and moisturization. Furthermore, because both references are directed to conventional and compatible lipid compositions used as raw materials in cosmetic formulations, a person of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Tsubaki (‘794) and Ehara (‘702) to reach the claimed invention.
Double Patenting
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 identical 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, 2, 7, 8, 9, 11, 12, 13 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 2, 5-7, 12, 13, 15-19 and 21 of copending Application No. 18/710,762 (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 “personal care composition” in the preamble of the claims in this application does not breathe any life into the claims of this application that is significantly different the “composition” language in the preamble of copending Application No. 18/710,762. The limitations in the various combination of claims are the same in both applications.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENT T O'HERN whose telephone number is (571)272-6385. The examiner can normally be reached M-Th 5:00 am - 3:30 pm.
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/BRENT T O'HERN/ Primary Examiner, Art Unit 1793 May 8, 2026
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