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 .
DETAIL ACTION
This office action is a response to a 371 application filed -----7/24/2024 which is a national stage application of PCT/JP2023/001028 filed 1/16/2023, which claims foreign priority to JP2022-009220 filed 1/25/2022.
As filed, claims 1-6 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/5/2025 and 7/24/2024 has been considered by the Examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application.
Claim Rejections - 35 USC § 112 fourth paragraph
The following is a quotation of the fourth paragraph of 35 U.S.C. § 112:
Subject to the following paragraph [concerning multiple dependent claims], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers (emphasis added).
Claim 2 is rejected under the fourth paragraph of 35 U.S.C. § 112 and under 37 CFR § 1.75(c), as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim(s), or amend the claim(s) to place the claim(s) in proper dependent form, or rewrite the claim(s) in independent form.
Regarding claim 2, the claim is dependent upon claim 1. The subject matter in claim 1 is drawn to a copolymer in a product by process construction. The subject matter in claim 2 is drawn to a limited embodiment of the copolymer.
The scope of claim 2 is broader than scope of claim 1 because claim 2 uses “comprises” language, which is open-ended, while claim 1 does not use open-ended language. Because the scope of claim 2 is broader than claim 1, the claim failed to further limit the subject matter thereof, and fail to comply with the formal requirements set forth in the fourth paragraph of 35 U.S.C § 112.
The Examiner suggests that the claims be amended in a manner such that the scope of claim 2 is commensurate with the scope of claim 1.
Claim Interpretation
The Examiner finds the claim construction of claim 1 as a product by process limitation. In other words, the patentability of the instantly claimed copolymer is based on the copolymer itself, and not its method of preparation.
Since dependent claims 2 and 3 are drawn to a limited embodiment of the abovementioned method of preparation, the patentability of claims 2 and 3 remained on the copolymer itself.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived 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(a) 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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being obvious over Foreign Patent Application Publication No. WO2021/182500 (see IDS filed 7/24/2024) and using U.S. Patent Application Publication No. 2023/0108458 as its English equivalent, hereinafter Miyazono.
The applied reference has a common assignee/inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Regarding claims 1-6:
Determining the scope and contents of the prior art:
Miyazono, for instance, teaches a copolymer made of polyglyceryl-2 diisostearate (which is commonly known to be a plant-derived emulsifier, wherein instant variable R1 is C17 alkyl; instant variables X1 and X2 are H; instant variable X3 is -C(=O)R2; and instant variable R2 is C17 alkyl) and isophorone diisocyanate (IPDI) or cosmetic composition thereof, wherein the weight-average molecular weight of the copolymer can range from 2000 to 10000, and the content of the abovementioned copolymer can range from 0.01 mass% to 20 mass%
In addition, claims 2 and 3 are drawn to limitations further limiting the preparation process of the instant copolymer, which are not given patentable weight because the patentability of the claims is on the copolymer itself, and not its process of preparation.
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478
666
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(paragraph 0017)
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474
686
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(paragraph 0088)
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274
664
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(paragraph 0054)
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332
660
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(paragraph 0057)
Ascertaining of the difference between the prior art and the claim at issue:
Miyazono, for instance, did not explicitly teach the weight-average molecular weight of the copolymer is from 3,500 to 100,000 or from 5,000 to 40,000.
Finding of prima facie obviousness --- rationale and motivation:
The Examiner, according to the guidance in MPEP 2144.05(I)-(II), finds that a prima facie case of obviousness exists where the instantly claimed range of the weight-average molecular weight overlapped with the prior art. In addition, the Examiner does not find the abovementioned weight-average molecular weight of the copolymer as result-effective variable because the Applicant fails to demonstrate this parameter to impart any unexpected or novel aspect to the instant copolymer (i.e. no comparative example). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. Accordingly, this parameter is viewed as routine experimentation to optimize the instant copolymer, and not a patentable distinction.
Conclusion
Claims 1-6 are rejected.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PO-CHIH CHEN whose telephone number is (571)270-7243. The examiner can normally be reached Monday - Friday 10:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Clinton Brooks can be reached at (571)270-7682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PO-CHIH CHEN/Primary Examiner, Art Unit 1621
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