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 .
Response to Amendments
Status of claims
The amendment, filed 9/1/2026, is acknowledged.
Claims 1-10 and 12 are pending and under consideration in the instant Office Action.
Maintained Rejections
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 are rejected under 35 U.S.C. 103 as being unpatentable over Weerasooriya (US20110092715A1, published 4/21/2011) in view of Ferrari (Macauba as promising substrate for crude oil and biodiesel production, published 10/20/2012).
Weerasooriya teaches a process for making fatty amides by reacting an amine and one or more of a fatty acid ester or a fatty acid. The resulting fatty amides are fatty amidoamines, which are “useful in in the preparation of a wide variety of amphoteric compounds, including but not limited to betaines” (paragraph [0008]). Weerasooriya also teaches that these fatty acids that act as precursors to the fatty amidoamines may be derived from plant and animal sources(paragraph [0057]). Examples of these fatty acids include but are not limited to: myristoleic acid (a C14 acid), palmitoleic acid (a C16 acid), or oleic acid (a C18 acid), to name a few (paragraph [0057]). Weerasooriya further teaches that these fatty acids and fatty acid derivatives may be reacted with N,N-dimethylaminopropylamine (also known as 3-dimethylaminopropyl amine, or DMAPA) to yield the fatty amidoamine (paragraph [0006]). This reaction is demonstrated by Weerasooriya’s Example 2, which shows the reaction between the fatty acid and the DMAPA to yield the product (paragraph [0246]). This reaction is analogous to the reaction as claimed in instant claim 10(a). While the example uses a triglyceride derived from coconut oil as is typical in the art, it is important to note that the reaction can be carried out with any fatty acid or fatty acid derivative to form the resulting amide bond and fatty amide product, which may also be referred to as an amidoamine product, as when DMAPA is used the chemical structure contains both an amide group and a tertiary amine.
Further, Weerasooriya teaches that these amidoamines can be used as precursors to form amphoteric surfactants such as betaines (paragraph [0091]). These compounds “can be readily prepared by reacting the appropriate haloalkylanionic salt (for example sodium monochloroacetate)” (paragraph [0091]), which is analogous to the reaction as claimed in instant claim 10(b). Weerasooriya further exemplifies the betaines that can be developed by these reactions in paragraph [0119].
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From this example, as shown above, it is clear that the structure of the betaine aligns with the instant application. It is important to note that this is one specific example of a betaine, but Weerasooriya includes examples containing groups other than the propyl chain, other than the two methyl groups, and other than the methylene unit. This specific example reads on instant claims 4, 5, and 6. It is also important to note that this example of betaine is further classified as a cocamido betaine, reading on instant claim 7.
However, Weerasooriya does not teach the source of the fatty acid starting material as being derived from Macauba palm oil, the total weight percentage of betaines in the overall composition, nor the breakdown of the composition by fatty acid size classification.
This deficiency is made up for by the teachings of Ferrari (Macauba as promising substrate for crude oil and biodiesel production, published October 20, 2012).
Ferrari teaches the benefit of using Macauba as a source of palm oil, as it is more environmentally friendly and yields fatty acids including myristoleic acid (a C14 acid), palmitoleic acid (a C16 acid), or oleic acid (a C18 acid) to exemplify a few. The fatty acid composition of the oil derived from the Macauba palm plant is shown below (Ferrari pg 1123 table 2).
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Macauba palm is also explained by Ferrari to be a more readily available plant source, as it is “adapted to different environments, including cooler subtropical and drier semiarid ecosystem[s]” while oil palm requires hot and humid tropical environments (introduction paragraph [1]). Further, the amount of oil obtainable per hectare of the plant is greater than 5,000 kg, which is very high compared to other sources (introduction paragraph [2]). Ferrari also teaches that these oils can be derived from the Macauba plant fruit, kernel, pulp, or combinations thereof (section 3.2 and 3.3).
Given the teachings of Ferrari, it would have been prima facie obvious to one skilled in the art before the effective filing date of the claimed invention to use Macauba palm oil as a starting material to derive fatty acids and fatty acid derivatives and carry out chemical reactions to produce surfactants such as alkylamido betaines as taught by Weerasooriya. One of ordinary skill in the art would have been motivated to use Macauba palm oil because Macauba plant is an attractive source of oil as it is more environmentally friendly, more accessible, and more efficient. Further, the composition of fatty acids obtainable from Macauba palm oil, which are the same as those from other sources, it is evident that Macauba palm plant can be used interchangeably as a source of oil with a reasonable expectation of success. This reads on instant claim 1. The various parts of the plant (i.e. fruit, kernel, or pulp) can be used as the source for the oil, as taught by Ferrari. This reads on instant claim 2. The overall amount of fatty acid, specifically monounsaturated fatty acid, in the pulp oil was shown to be 60.2%, while the kernel oil showed a value of 29.2 wt% monounsaturated fatty acid and 66.4 wt% saturated fatty acid. Both the pulp oil and the kernel oil therefore have high fatty acid amounts, which could be converted via chemical reactions as taught by Weerasooriya to the corresponding betaines with the same percentage of the overall oil composition. As both pulp and kernel-derived betaines would be above 45 wt%, this reads on instant claim 3.
As is evidenced in table 2 above, Macauba kernel oil has the highest levels of fatty acids. These fatty acids can be converted to the corresponding betaines via the method described by Weerasooriya, and yield the same percentage of betaine as the starting material fatty acid. Converting the fatty acids derived from the Macauba kernel oil to the corresponding betaines, in total there would be:
3.9% C8 alkylamido betaine
3.4% C10 alkylamido betaine
38.7% C12 alkylamido betaine
8.9% C14 alkylamido betaine
8.3% C16 alkylamido betaine
36.6% C18 alkylamido betaine
These percentages lie within the ranges of instant claims 8 and 9.
In light of the teachings of Weerasooriya in view of Ferrari, the use of Macauba palm oil as a starting material to produce alkylamido betaine surfactants of various carbon chain lengths (i.e. C8 to C20) would have been prima facie obvious before the effective filing date of the instant application. One skilled in the art would have recognized the potential to use Macauba palm, and its various parts (i.e. fruit, pulp, kernel), as a source of oil, fatty acids, and fatty acid derivatives given the environmental and efficiency benefits compared to other sources. This includes greater availability of the plant, as it is more adapted to various environments, and the greater amount of oil that can be extracted per hectare. These fatty acids and fatty acid derivatives are then converted to the alkylamido betaine via methods described by Weerasooriya. One skilled in the art would have a reasonable expectation of success as not only is the plant more accessible and productive, but it produces the same kinds of fatty acids as the animal and plant sources of Weerasooriya. As the fatty acids are the same, they have the same chemical composition and will undergo the same chemical transformations as described by Weerasooriya to yield betaines. Therefore, claims 1 and 2 are rejected. The overall amounts of alkylamido betaines in the total composition are derived from the amounts of fatty acid in the natural source, as described supra. Therefore, claims 3, 8, and 9 are rejected. The alkylamido betaines obtained via the previously described chemical reactions would yield compounds of structure identical to the instant claims. Therefore, claims 4-6 are rejected. The compounds yielded are also classified as cocamido betaines, as described supra. Therefore, claim 7 is rejected. The chemical reactions as claimed in instant claim 10 are identical to the steps as described by Weerasooriya. Given the teachings of Ferrari, it would be obvious to subject the Macauba-derived fatty acids to the chemical reactions as claimed. Therefore, claim 10 is rejected.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Weerasooriya and Ferrari as applied to claims 1-10 above, and further in view of Hohenstein et al. (US6566313B1, published 5/20/2003).
Weerasooriya and Ferrari have been described supra.
However, neither Weerasooriya nor Ferrari teach the inclusion of the alkylamido betaine composition in a personal care or cleaning composition. This deficiency is made up for by the teachings of Hohenstein.
Hohenstein teaches a conditioning shampoo and/or body wash composition, and a method of using the same. The composition includes at least one anionic surfactant, at least one conditioning complex, and water. Hohenstein teaches a preferred embodiment of the invention that “contains an amphoteric surfactant, zwitterionic surfactant, or combinations thereof” (col. 7 lines 65-66). Hohenstein further elaborates that suitable surfactants include alkylamidobetaines (col. 8 line 6), as demonstrated by formula III.
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This formula aligns with the instant claims.
It would have been prima facie obvious to one skilled in the art before the effective filing date of the claimed invention to take the alkylamido betaines synthesized by chemical conversions of fatty alcohols derived from the Macauba palm oil described supra and apply it to the shampoo and/or body wash as described by Hohenstein, particularly in view of the fact that Macauba oil can be used in various industries including cosmetics according to Ferrari (e.g., pg. 1119, right column). The alkylamido betaines formed via the teachings of Weerasooriya and Ferrari align with the preferred embodiment of a zwitterionic surfactant included by Hohenstein in a personal care composition. Therefore, claim 12 is rejected.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references.
Response to Arguments
The Applicant’s arguments, filed 9/1/2026, have been fully considered but are not persuasive.
Applicant argues that the instant application and claimed invention has “surprising and unexpected result.” Applicant argues that this is demonstrated by increased temperature-independent storage stability, shown by pH and color analysis, and improved foam development of shampoo/body wash formulated using cocamidopropyl betaine derived from Macauba oil.
Applicant’s arguments and evidence have been fully considered but is not found persuasive.
Regarding the temperature-independent storage stability, Applicant has not shown that the differences are significant. When comparing the pH values of Comparative Example 2 and Inventive Example 4, there is no statistical analysis or information provided regarding sample size or standard deviation, for example. Further, CE2 experimental pH values lie within the initial pH range as shown in Table 3. IE4 experimental pH values also lie within the initial pH range. Therefore, it can be said that neither CE2 nor IE4 change significantly from initial pH and there is no significant difference between the stability of the two compositions. Applicant also argues that the lack of color change for Macauba-derived compositions is sufficient to indicate stability differences between CE and IE examples. This is not found persuasive, as there is no quantitative data to indicate this provided. Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Regarding the foaming ability of each composition, Applicant has not shown that the differences are significant. Applicant has not provided any statistical analysis to demonstrate that the increase in foaming ability of Macauba-derived compositions is in fact significantly greater than comparative examples. No data regarding mean and standard deviation, nor regarding statistical comparison, is provided.
In all, there is a lack of statistical data or any obviously significant differences between comparative and inventive examples. The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength “are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration.”); Ex parte C, 27 USPQ2d 1492 (Bd. Pat. App. & Inter. 1992).
Finally, Applicant has not provided examples that are commensurate in scope with the instant claims. Claim 1 is drawn to a composition comprising alkylamido betaines, wherein the alkylamido betaines are derived from Macauba palm oil. The examples used and outlined in the specification comprise much more than just alkylamido betaines derived from Macauba palm oil. Therefore, the scope of the claims and the examples used to provide data are not aligned. The claims are much broader than the tested compositions. It is unclear if the same effect would be seen for all concentrations and structures within the scope of the claims. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
The previously presented rejection under 25 U.S.C. 103 is strong enough and sufficient. The rejection is based on a solid foundational reference of Weerasooriya that teaches the limitations of the instant invention, with the exception of the source of the oil, as well as the overall breakdown of compounds in the oil. This deficiency is successfully remedied by Ferrari, which provides sufficient motivation and reasonable expectation of success to inform the invention of Weerasooriya, as described supra. One would have a motivation to use Ferrari to inform the teachings of Weerasooriya, in particular because the amount of oil obtainable from Macauba palm is higher than alternatives at more than 5,000 kg of oil per hectare (Ferrari, introduction). Further, Macauba oil is taught by Ferrari to be more environmentally friendly, more accessible, and more efficient, as described supra. Macauba is able to adapt to a variety of conditions (Ferrari, introduction), making it easier to grow and develop, and therefore more attractive as a source of fatty acids. One would have a reasonable expectation of success, as described supra, as the fatty acids derived from the Macauba are chemically identical to fatty acids derived from other sources. In other words, C8 alkylamido betaine is the same no matter where it is derived from. Therefore, as the fatty acids are common between Weerasooriya and Ferrari, one would have reasonable expectation of success. The motivation and expectation of success are sufficient to expect one of ordinary skill in the art to look to Ferrari and modify Weerasooriya accordingly, resulting in the instantly claimed invention. This combination may be further modified by Hohenstein, as described supra, to successfully develop a personal care or cleaning composition. One would have reasonable expectation of success and motivation to combine the teachings as the chemical structures are common, as described supra. The obviousness of the modification of Weerasooriya by Ferrari and Hohenstein is strong and sufficient enough to rebut the assertion of unexpected results, and overcome an assertion of nonobviousness of the invention. Facts established by rebuttal evidence must be evaluated along with the facts on which the conclusion of a prima facie case was reached, not against the conclusion itself. In re Eli Lilly, 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990). In other words, each piece of rebuttal evidence should not be evaluated for its ability to knockdown the prima facie case. All of the competent rebuttal evidence taken as a whole should be weighed against the evidence supporting the prima facie case. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Although the record may establish evidence of secondary considerations which are indicia of nonobviousness, the record may also establish such a strong case of obviousness that the objective evidence of nonobviousness is not sufficient to outweigh the evidence of obviousness. Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 769, 9 USPQ2d 1417, 1427 (Fed. Cir. 1988), cert. denied, 493 U.S. 814 (1989); Richardson-Vicks, Inc., v. The Upjohn Co., 122 F.3d 1476, 1484, 44 USPQ2d 1181, 1187 (Fed. Cir. 1997)
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW RYAN BURKE whose telephone number is (571)272-8949. The examiner can normally be reached Mon-Fri. 8am-5pm.
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/MATTHEW RYAN BURKE/Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
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