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 Status
Claims 1-11 are pending and being examined on the merits.
Claim Objections
Claims 6 and 8 are objected to, because the term “followings” should instead read
--following--. Appropriate correction is required.
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 2, 3, and 5 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.
Claims 2, 3, and 5 state percentages without indicating whether they are by weight or by volume. Claim 3 does not indicate whether the percentages are by weight or by volume of the composition or the cocoa butter fatty acid ethyl esters. Claim 5 does not indicate whether the percentages are by weight or by volume of the personal care composition or by weight or by volume of the emollient composition. Appropriate clarification is necessary to determine the metes and bounds of the claimed compositions.
Claim Rejections - 35 USC § 102
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 10 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (WO 2018056609 A1, machine translation, 8 pages).
The instant claims are as of record, drawn to a method of making a composition comprising cocoa butter fatty acid ethyl esters comprising heating cocoa butter, ethyl alcohol, and an esterification catalyst to 70°C.
Lee et al., however, anticipate the claims by teaching that fatty acid ethyl esters are usually obtained by transesterification of free fatty acids derived from animal and vegetable fats and oils, including cocoa oil (butter; providing cocoa butter), at 70-90°C (esterification temperature) using (e.g., mixing) alcohol such as ethanol (ethyl alcohol) and a catalyst (esterification catalyst; Lee et al., page 2; as required for instant Claims 10 and 11).
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Alander et al. (US 2019/0127661 A1) in view of Lee et al. (WO 2018056609 A1, machine translation, 8 pages) as evidenced by Lindberg (Healthline, 2020, 10 pages).
The instant claims are as of record, drawn to an emollient composition comprising cocoa butter fatty acid ethyl esters and a personal care composition comprising said emollient composition.
Alander et al. teach a cosmetic alkyl ester ingredient comprising shea butter oil ethyl esters which are produced by transesterification of sea butter oil and ethanol (Alander et al., [0009]; as required for instant Claim 1). The ingredient can be used for preparing personal care, cosmetic, skin care, hair care, lip care, sun care, and color care cosmetic formulations and can be provided as a lotion, ointment, or cream compositions (emollient; Alander et al., [0021]; as required for instant Claims 4 and 9). The overall amount of fatty acid ethyl esters can range from 81-97 wt% (greater than 90%; Alander et al., [0038]-[0039]; as required for instant Claim 2) in the ingredient. An ingredient comprising 89 wt% shea butter fatty acid ethyl ester can be made by stirring (mixing) shea butter oil, ethanol (ethyl alcohol), and NaOEt (esterification catalyst), and then heating to 75°C (about 70°C {see e.g., instant specification at [0018]; ±10% of 70°C is ±7°C for a range of 63-77°C}; esterification temperature; Example 1, Alander et al., [0087]-[0095]; as required for instant Claims 10 and 11). Reactions of ethanol and shea butter with sodium ethylate as a catalyst have a saturated fatty acid ethyl ester content ranging from 25-83%, depending on the type of shea butter used and the location from which it was obtained (ethyl stearate and ethyl palmitate; about 60% to about 70%; Alander et al., [0077] & [0082]; as required for instant Claim 3). The amount of the ingredient in various formulations ranges from 0.3-100 wt%, depending on the required application (between 20 and 40%; Alander et al., [0062]; as required for instant Claim 5).
Alander et al. do not teach wherein the fatty acid ethyl esters are obtained from cocoa butter or the additional components of instant Claims 6-7.
Lee et al., however, teach fatty acid ethyl esters which can be prepared using various vegetable oils, including cocoa oil (cocoa butter; Lee et al., page 3; as required for instant Claims 1 and 10), and included in various compositions. The compositions include cosmetic compositions such as sunscreen creams, nourishing lotions, soaps, and liquid cleansers and may comprise additional ingredients such as pigments (colorant), preservatives, fragrances (perfume), and active ingredients (substance) including those with a sunscreen effect (sunscreen agent; Lee et al., page 5; as required for instant Claims 6-8).
It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the instant application to include the ingredients of Lee et al. in the compositions of Alander et al. and to provide cocoa butter as the vegetable oil in the method of Alander et al. A skilled artisan would know that including various ingredients used to formulate various general skin cosmetics could reasonably be included in the compositions of Alander et al., and would be motivated to do so to not only make those specific formulations, but also to provide functional ingredients having the antioxidant effect, the anti-wrinkle effect, the anti-aging effect and/or the sunscreen effect (Lee et al., page 5). A skilled artisan would know that cocoa butter could be used in the method of Alander et al., as disclosed by Lee et al., and would be motivated to provide cocoa butter as the source of fatty acid ethyl esters because while both types can soften and heal dry or damaged skin, cocoa butter has the benefit of being composed primarily of saturated fats and helping to replenish the skin stratum corneum lipids (Lindberg, 2020, Healthline, 10 pages). Based upon the disclosure of Lee et al. regarding transesterification of vegetable oils and ingredients of compositions comprising those ingredients and the disclosure of Alander et al. regarding a method of making an emollient ingredient comprising fatty acid ethyl esters, a skilled artisan could arrive at the claimed compositions and method with a reasonable expectation of success.
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 was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Please note, since the Office does not have the facilities for examining and comparing Applicants’ composition with the composition of the prior art, the burden is on applicant to show a novel or unobvious difference between the claimed product and the product of the prior art. See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977) and In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980), and “as a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685,
688 (CCPA 1972).
Conclusion
No claims are currently allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER L CAIN whose telephone number is (703)756-1318. The examiner can normally be reached M-Th 11:00am to 5:00pm EST.
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/J.L.C./Examiner, Art Unit 1655
/AARON J KOSAR/Primary Examiner, Art Unit 1655
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