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 Objections
Claim 10 is objected to because of the following informalities:
In line 2 of claim 10, “has acid value” should be “has an acid value”.
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 and 4-6 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.
In claim 2 it is not clear whether “0.5 to 10%” is a weight percent, a mole percent, or some other percent.
Claim 4 recites “the mixture of triglycerides present in the natural oil-based petrolatum composition”, but there is no antecedent basis in the claims for “the mixture of triglycerides”. Claim 1, from which claim 4 depends, only recites a “triglyceride component”. The examiner recommends that “the mixture of triglycerides” be replaced by “the triglyceride component comprises a mixture of triglycerides” and then replace “contains” with “comprising”.
In claim 4 it is also unclear what is meant by “contains 20% to 70% of ester containing fatty acids”. It is unclear whether the recited fatty acids are fatty acid residues on the triglycerides or free fatty acids, and it is also unclear whether the limitation means that 20 to 70% of the fatty acid residues are esterified, or whether 20 to 70% (by weight?) of the triglyceride component is made up of the ester containing fatty acid residues. For the purposes of examination, the claim is considered to recite the percentage of triglyceride fatty acid residues that are esterified.
In claims 5-6, fatty acid esters do not contain free fatty acid. The examiner recommends that “esters” be appended to the end of the claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claims 16-17 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 16 recites a candle wax composition comprising a wax formulation according to claim 1. Since claim 16 does not require any additional components and “candle wax” has not been defined in a way that implies additional limitations, claim 16 fails to further limit claim 1. Claim 17, which depends on claim 16 and recites that the candle wax can comprise 100% by weight of the wax formulation, similarly fails to further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 3, 7, 12-14, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (WO 2021/123164 A1) in light of the evidence provided by Pistorio (U.S. Pat. No. 10,626,294).
An English-language equivalent of Nakamura, U.S. PG Pub. No. 2023/0054819, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the English-language reference.
In paragraph 8 Nakamura discloses a composition which comprises wax components (A) and (B), and a component (D) which can be hydrogenated castor oil isostearate. Hydrogenated castor oil stearate meets the limitations of the natural oil-based petrolatum composition of claim 1, where castor oil is a triglyceride component containing a plurality of hydroxyl containing fatty acid chains, and the fatty acid chains are esterified with isostearic acid, which is a C18 branched chain fatty acid. Nakamura does not specifically disclose the melting point of hydrogenated castor oil isostearate, but Pistorio, in the table at the top of column 9, indicates that hydrogenated castor oil isostearate has a melting point of 52.5° or 54° C, within the range recited in claim 1.
In paragraph 25 Nakamura discloses that the candelilla wax component (A) is present in an amount of 2 to 12% by weight, and in paragraph 33 Nakamura discloses that the plant-based or animal-based wax (B) is present in an amount of 2 to 20% by weight, leading to a total wax content of 4 to 32% by weight, overlapping the range recited in claim 1. In paragraph 55 Nakamura discloses that the component (D), which can be hydrogenated castor oil isostearate, is present in an amount of 20 to 70% by weight in a preferred embodiment, within the range recited in claim 1. The triglycerides in hydrogenated castor oil isostearate have three esterified fatty acids, meeting the limitations of claim 3. The hydrogenated castor oil isostearate can be the only component (D) in Nakamura and therefore meets the limitations of claim 7 where the natural oil-based petrolatum composition comprises 100% by weight of the triglyceride. Since the hydrogenated castor oil isostearates of Nakamura meet the structural limitations of the claimed natural oil-based petrolatum, they will possess the properties recited in claims 8-11.
Both the candelilla wax component (A) of Nakamura and the plant-based or animal-based wax component (B) of Nakamura meet the limitations of the natural oil-based waxes of claim 12.
In paragraphs 58-59 and 61 Nakamura discloses that the composition can comprise natural oils in amounts overlapping or within the range recited in claim 13, such as 35 to 85% by weight. In paragraph 59 Nakamura discloses that the composition can comprise hydrogenated-2 castor oil dimer dilinoleate, meeting the limitations of the hydrogenated natural oil of claim 14.
While Nakamura does not specifically disclose the composition of the reference as a candle wax, it meets the compositional limitations of the claimed wax formulation, and since claim 16 does not require any additional components and claim 17 explicitly recites that the candle wax can comprise 100% by weight of the wax formulation, the composition of Nakamura would be capable of performing the intended use of claims 16-17 as a candle wax. In paragraphs 63 and 65 Nakamura discloses that the composition can further comprise a coloring agent (colorant) and a surfactant, as recited in claim 18. In paragraph 63 Nakamura discloses that the colorant can be present in an amount of 0.01 to 30% by weight, encompassing the range recited in claim 19.
The difference between Nakamura and the currently presented claims is that some of the ranges of Nakamura overlap or encompass the claimed ranges rather than falling within them.
See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).
In light of the above, claims 1, 3, 7-14, and 16-19 are rendered obvious by Nakamura in light of the evidence provided by Pistorio.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Nakamura in light of the evidence provided by Pistorio, as applied to claims 1, 3, 7-14, and 16-19 above, and further in view of Suzuki (U.S. Pat. No. 5,011,680).
The discussion of Nakamura in paragraph 11 above is incorporated here by reference. Nakamura discloses a solid cosmetic composition comprising a wax formulation meeting the limitations of claim 1, but does not disclose a specific method of preparing the wax formulation.
Suzuki, in column 5 lines 52-66, discloses that a solid cosmetic preparation can be conducted according to a customary process where base materials such as wax are “molten by heat”, indicating that the wax is heated to a material where it is in a molten state, and combined with the other components of the composition, meeting the limitations of the method of claim 21. Preparing the composition of Nakamura by a method where the wax components are heated to a molten state prior to combining with the other components such as the hydrogenated castor oil stearate therefore meets the limitations of claim 21.
It would have been obvious to one of ordinary skill in the art to prepare he composition of Nakamura by a method where the wax components are heated to a molten state prior to combining with the other components, since Suzuki teaches that it is a customary process for preparing a solid cosmetic preparation.
Claims 1, 3-4, 7-13, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Arnaud (U.S. PG Pub. No. 2004/0028640).
In paragraph 16 Arnaud discloses a composition comprises an aliphatic ester of an ester. In paragraphs 48-53 Arnaud discloses that the aliphatic ester of an ester can be a monoisostearate, diisostearate, or triisostearate of hydrogenated castor oil, or mixtures thereof, meeting the limitations of the natural oil-based petrolatum composition of claim 1, where castor oil is a triglyceride component containing a plurality of hydroxyl containing fatty acid chains, and the fatty acid chains are esterified with isostearic acid, which is a C18 branched chain fatty acid. Arnaud discloses that the melting point of the monoisostearate is 34.6° C, which rounds to 35° C, within the range recited in claim 1. In paragraph 55 Arnaud discloses that the aliphatic ester of an ester is present in an amount of 5 to 60% by weight of the composition, within the range recited in claim 1, or broader ranges overlapping or encompassing the range recited in claim 1.
In paragraphs 84-89 Arnaud discloses that the composition comprises at least one wax, where the wax is preferably present in an amount of 2 to 40% by weight, overlapping the range recited in claim 1.
When the aliphatic ester of an ester of Arnaud comprises at least some diisostearate or triisostearate of a hydrogenated castor oil, claim 3 is met. When the aliphatic ester is a monoisostearate or a diisostearate, 33% or 67% of the acid residues are ester containing, within the range recited in claim 4. The hydrogenated castor oil monoisostearate, diisostearate, and/or triisostearate of Arnaud also meets the limitations of claim 7 for the case where the natural oil-based petrolatum composition comprises 100% by weight of the triglyceride. Since the hydrogenated castor oil isostearates of Arnaud meet the structural limitations of the claimed natural oil-based petrolatum, they will possess the properties recited in claims 8-11.
In paragraph 87 Arnaud discloses that the wax can be various natural oil-based waxes, as recited in claim 12.
In paragraphs 90, 92, and 100-101 Arnaud discloses that the composition can comprise natural oils in amounts within or overlapping the range recited in claim 13.
While Arnaud does not specifically disclose the composition of the reference as a candle wax, it meets the compositional limitations of the claimed wax formulation, and since claim 16 does not require any additional components and claim 17 explicitly recites that the candle wax can comprise 100% by weight of the wax formulation, the composition of Arnaud would therefore be capable of performing the intended use of claims 16-17 as a candle wax. In paragraph 76 Arnaud discloses that the composition can comprise a coloring agent, as recited in claim 18, in amounts overlapping the range recited in claim 19.
In light of the above, claims 1, 3-4, 7-13, and 16-19 are rendered obvious by Arnaud.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Arnaud, as applied to claims 1, 3-4, 7-13, and 16-19 above, and further in view of Suzuki (U.S. Pat. No. 5,011,680).
The discussion of Arnaud in paragraph 13 above is incorporated here by reference. Arnaud discloses a cosmetic composition comprising a wax formulation meeting the limitations of claim 1, and in paragraph 106 discloses that the composition is advantageously provided in a solid form, but does not disclose a specific method of preparing the wax formulation.
Suzuki, in column 5 lines 52-66, discloses that a solid cosmetic preparation can be conducted according to a customary process where base materials such as wax are “molten by heat”, indicating that the wax is heated to a material where it is in a molten state, and combined with the other components of the composition, meeting the limitations of the method of claim 21. Preparing the composition of Arnaud by a method where the wax components are heated to a molten state prior to combining with the other components such as the hydrogenated castor oil stearate therefore meets the limitations of claim 21.
It would have been obvious to one of ordinary skill in the art to prepare he composition of Arnaud by a method where the wax components are heated to a molten state prior to combining with the other components, since Suzuki teaches that it is a customary process for preparing a solid cosmetic preparation.
Allowable Subject Matter
Claims 15 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 2 and 5-6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claim 2, neither Nakamura nor Arnaud disclose the monoglyceride and diglyceride concentration of the hydrogenated castor oil isostearate.
Regarding claims 5-6, Nakamura and Arnaud both disclose hydrogenated castor oil esterified with isostearic acid. One of ordinary skill in the art would not be motivated to modify Nakamura or Arnaud to esterify the hydrogenated castor oil with stearic or palmitic acid instead, while also maintaining a melting point within the claimed range.
Regarding claim 15, neither Nakamura nor Arnaud disclose the melting point of the overall wax formulation. While Nakamura and Arnaud meet the compositional limitations of the claimed wax formulation, they also comprise additional components, and cannot be said to inherently possess the melting point of claim 15.
Regarding claim 20, Nakamura and Arnaud disclose cosmetic compositions comprising the wax formulation. Even though the wax formulations of Nakamura and Arnaud are capable of performing an intended use as a candle wax composition, one of ordinary skill in the art would have no motivation to incorporate the wax formulation into a candle comprising a wick.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771
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