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 .
Election/Restrictions
Applicant’s election without traverse of 6-pentydodecane disclosed at Formula II, encompassed by claims 1-8, 10, 12, 13, 21-23, in reply filed on 06/15/2026 is acknowledged.
Claims 14, 15, 17, 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/15/2026.
Claim Rejections - 35 USC § 112 – Indefiniteness
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.
Claim 1-6, 21-23 is 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.
Instant claim 1 is indefinite because it recites, in part, “(R1-A)a-CH(R2)-…” wherein “a” is 1 or 2. The structure “(R1-A)2-CH(R2)-…” (i.e., “a” is 2) is not clear from the disclosure. For example, it cannot be the case that two “(R1-A)” groups are attached to the carbon of the adjacent CH(R2) when “a” is 2, because such a structure would violate the strict valency limit of carbon. Accordingly one must assume that the second “(R1-A)” group is attached to the first “(R1-A)” group. However, there is no indication as to where the second (R1-A) would attach in the event that “a” is 2. For the purposes of examination the Examiner will interpret the structure when “a” is 2 to by (R1-A)-(R1-A)-CH(R2) wherein (R1-A) may be attached to (R1-A) at any point.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, at Formula II, claim 1 recites the broad range of wherein R is chosen from a methyl to a hexyl group and R4 is a linear alkyl having 1-8 carbons, and the claim also recites wherein the total carbon content is 12-19 which is the narrower statement of the range/limitation. The recited range of 12-19 total carbons is a narrower than the ranges provided by R and R4 because when R4 is 8 there is no selection of R that can satisfy to total carbon count requirement. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 13 recites the limitation "the compound of Formula I" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination the “Formula I” will be interpreted as Formula I as recited in instant claim 1.
Claim Rejections - 35 USC § 112 – Scope of Enablement
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
1) Claims 1-6 and 21-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for Formula I when a is 1, does not reasonably provide enablement for Formula I when a is 2. Specifically, the claims indicate that when “a” is two there exists carbons with 5 bonds. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Factors to be considered in determining whether a disclosure meets the enablement requirement of 35 U.S.C. §112, first paragraph, have been described In re Wands, 8 USPQ2d 1400(1988). They are:
1. The breadth of the claims;
2. The nature of the invention;
3. The state of the prior art;
4. The predictability or lack thereof in the art
5. The level of skill in the art;
6. The amount of direction or guidance present;
7. The presence or absence of working examples;
8. The quantity of experimentation needed.
The breadth of the claims
The claims recite a very broad structure comprising unsaturated furans, partially hydrogenated furans, fully hydrogenated furans, or alkyl chains comprising alcohols, ketones and aldehydes.
The state of the prior art/ The predictability or lack thereof in the art
In view of the art, one would not have expected to form a compound having carbons bonded to 5 atoms, as implied by Formula I when “a” is 2. While such a concept was known, it was not trivial, as evidenced by Malhan et al. (Chemistry, 2023, v. 5, no. 2, p. 1113-1123) at the first paragraph: “The concept of five bonds to carbon became indispensable since the discovery of methanium ion (CH+5) in the laboratory in 1950 [1]. Recording the infrared spectra of this simple protonated methane molecule was quite challenging, as it took almost five decades from its discovery.”
The level of skill in the art
The level of skill would be high to make a compound comprising a carbon bonded to 5 atoms.
The amount of direction or guidance present
The specification does not give any guidance in this regard. The closest direction given is at page 2 of the specification as originally filed which discloses Formula I and discloses A may be “-(CH2)4-“. This, however, is not present in the claims, nor is there a proviso to only select “-(CH2)4-“ when “a” is 2.
The presence or absence of working examples
There are no working examples that specifically represent Formula I when “a” is 2.
The quantity of experimentation needed
Due to the lack of direction and working examples in the specification and the well-known principle of a standard 4 bond carbon, undue experimentation would be required to reproduce invention as instantly claimed.
Conclusion
Due to the experimentation necessary to make Formula I when “a” is 2; the lack of direction/guidance presented in the specification regarding the specific structure; the unpredictability of the implied 5 carbon bond; the breadth of the claims, undue experimentation would be required of a skilled artisan to make the claimed invention in its full scope.
2) Claims 1-6 and 21-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for Formula I broadly, does not reasonably provide enablement for Formula I R2 or R3 is a ring. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
Factors to be considered in determining whether a disclosure meets the enablement requirement of 35 U.S.C. §112, first paragraph, have been described In re Wands, 8 USPQ2d 1400(1988). They are:
1. The breadth of the claims;
2. The nature of the invention;
3. The state of the prior art;
4. The predictability or lack thereof in the art
5. The level of skill in the art;
6. The amount of direction or guidance present;
7. The presence or absence of working examples;
8. The quantity of experimentation needed.
The breadth of the claims
The claims recite a very broad structure comprising unsaturated furans, or fully hydrogenated furans for R2 and R3.
The state of the prior art/ The predictability or lack thereof in the art
In view of the art, one would not have expected to form a compound according to Formula I wherein R2 or R3 is furan ring or a tetrahydrofuran ring. For example, see Corma et al. (Angew. Chem. Int. Ed. 2001, v. 50, p. 2375-2378). Corma discloses that a catalyzed reaction of the following scheme [p. 2376]:
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Corma further discloses “that with 2MF [2-methylfuran], selective hydroalkylations could be carried out, and polymer formation should be inhibited since one of the two reactive a-positions is “protected” by the unreactive methyl group” [p. 2376, col. 1, 2nd para.]. The disclosure of Corma is pertinent because the instant application discloses condensation of 2-methylfuran and aldehydes (e.g., heptanal) [p. 23]:
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As such, following the instant disclosure to a make a compound comprising two adjacent tetrahydrofuran groups wherein one does not comprise a methyl (i.e., Formula I wherein R1 or R3 is a tetrahydrofuran or furan), one would have had to react a 2-methylfuran, tetrahydrofuran and an aldehyde. However, considering the disclosure of Corma, a skilled artisan would have expected the “unprotected” furan or tetrahydrofuran group to cause a loss of selectively and polymerize.
The level of skill in the art
The level of skill would be high to synthesize these compounds.
The amount of direction or guidance present
The specification does not give any guidance in this regard. The closest direction given is at page 25 when the instant specification discloses the following reaction:
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While this example demonstrates the addition of a tetrahydrofuran without a methyl to a carbon that is bonded to another tetrahydrofuran group, the compound nevertheless does not correspond to a compound of Formula I wherein R2 or R3 is a furan or tetrahydrofuran.
The presence or absence of working examples
There are no working examples that represent a compound of Formula I wherein R2 or R3 is a furan or tetrahydrofuran.
The quantity of experimentation needed
Due to the lack of direction, lack of working examples in the specification and the expectation of polymerization, as disclosed by Corma, undue experimentation would be required.
Conclusion
Due to the experimentation necessary to make Formula I wherein R2 or R3 is a furan or tetrahydrofuran; the lack of direction/guidance presented in the specification regarding the specific structure; the unpredictability of the synthesis; the breadth of the claims, undue experimentation would be required of a skilled artisan to make the claimed invention in its full scope.
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.
1) Claims 1, 2, 5, 7, 8, 10, 12 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Corma et al. (Angew. Chem. Int. Ed. 2011, v. 50, p. 2375-2378) in view of Zimmer et al. (Fuel, 2013, p. 153-162). Regarding instant claims 1, 2, 5, 7, 8, 10, 12 and 21 Corma relates to the production of diesel from biomass [title] and seeks “to obtain hydrocarbons with ten to eighteen carbon atoms within the diesel fraction” [p. 2375, col. 1, para. 1, last para.]. To that end, Corma discloses the following synthesis scheme at page 2376 [scheme 2]:
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Corma does not disclose a composition comprising 6-pentyldodecane, a component B of instant claim 1 and the specifically claimed bio-based carbon content range.
Zimmer discloses “[m]icroorganisms can cause many operational problems, particularly, during storage and handling of fuel systems. The susceptibility of diesel systems to microbial contamination has been studied for many years but the introduction of biodiesel (Brazil- B5) has raised the incidence of problems in tanks around the world. Among the mitigation alternatives, biocides have been identified as a good one to curb microbial growth. The aim of this research was the effectiveness assessment of two biocides a MBO antimicrobial agent (as multifunctional package) and MIT/CMIT antimicrobial agent in biodiesel (B100 – 60% soya and 40% tallow), conventional diesel (B0 – low sulfur 50 ppm) and blends B7 and B10.” [abstract]. Zimmer concludes that “[b]oth antimicrobial products were able to protect all grades of fuel evaluated” (i.e., diesel, biodiesel and blends) [p. 161, last paragraph].
Firstly, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have combined the antimicrobial additives of Zimmer with the bio-derived diesel of Corma. One would have been motivated to make this combination because Zimmer offers a solution to the problem of microbial growth during storage and handling of fuel systems. One would have had an expectation of success because Zimmer discloses the additives protected diesel, biodiesel and blends. Additionally, in combining these elements one would have expected nothing more than predictable results because, when combined by known methods, each prior art element would have performed the same function as it had separately. See MPEP 2143, Exemplary Rationale A.
Second, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). See MPEP 2144.09. In the present case, the elected species of 6-pentyldodecane is a homolog of the 6-pentylundecane disclosed by Corma because the two compounds differ by the successive addition of a -CH2- group. One would have had an expectation of success because a skilled artisan would have appreciated that 6-pentyldodecane is achievable with the methods of Corma by substituting the aldehyde or a 2-methylfural of Corma’s Scheme 2.
Finally, "where 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" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). In the present case, Corma discloses bio-derived diesels but does not disclose the instantly claimed bio-based carbon content. However, because Corma desires fuels derived from biomass, a skilled artisan would have been motivated to, and had an expectation of success in optimizing Zimmer the bio-based carbon content through routine experimentation. As a result, the instantly claimed bio-based carbon content would have been obvious to a skilled artisan before the effective filling date of the claimed invention.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated a composition comprising 6-pentydodecane and an antimicrobial agent. Wherein the bio-based carbon content according to ASTM D6866 is within the instantly claimed range. Because the prior art contains substantially the same components as instantly claimed, it would have been expected to possess the same properties and be capable of satisfying the same applications, i.e. a cosmetic composition. Similarly, the composition of the prior art would have been capable of treating hair and so it may be considered a hair treatment, per instant claims 5 and 12.
Regarding instant claim 2, Corma discloses “after hydrodeoxygenation of the intermediate bisylvylalkanes, product mixtures were obtained in excellent yield that can be used for direct blending for high-quality diesel” [p. 2376 col. 1, 2nd full para., last sentence].
Zimmer discloses biodiesel-conventional diesel blend B7 and B10 (i.e., 7% biodiesel and 10% biodiesel) [abstract].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the instantly claimed range from 0.1-99% overlaps with the amounts taught by the prior art, e.g., 7% and 10 %, and so a prima facie case of obviousness exists.
2) Claims 1-8, 10, 12, 13, 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Saha et al. (WO 2019/036663 A1, publication date 02/21/2019; cited in IDS 08/07/2023) in view of Gore et al. (Biotribology, 2018, v. 16, p. 17-24) and Robles (WO 1994/21223, publication date 09/29/1994).
Regarding instant claims 1, 5, 7, 10, 12 and 21, Saha discloses “oils with tailored molecular architecture and content are produced from reacting 2-alkylfurans with one or more aldehyde, dialdehydes, enals and/or ketones” [p. 2, lines 32-34]. According to Saha, the compounds disclosed therein have “a bio-based content in the range of 20 to 100%, according to ASTM-D6866” [p. 22, lines 29-30]. In one “aspect of the invention, a personal care composition is provided, the personal care composition comprising” an oil with tailored molecular architecture according to the disclosure and an effective amount of one or more additives such as a pigment [p. 6, lines 12-37]. “The personal care composition of the present disclosure may be used in any suitable application including, but not limited to, cosmetics, sunscreens, lotions, creams, antiperspirants, deodorants, and medicated ointments, creams, and oils” (i.e., instant claims 5 and 12) [p. 21, lines 1-4]. In one aspect of Saha the oil is defined by the following formula disclosed on page 13:
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Examples of such oils include 6-pentylheptadecane [p. 49, last example]
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which is synthesized by the reaction of 2-methylfuran and a C-12- aldahyde (see Table 2, row 1 on page 41; reproduced below):
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Saha does not disclose the 6-pentyldodecane, i.e., the elected species.
Gore relates to the impact of the oil phase on the spreading behavior of cosmetic formulations [title]. Gore discloses that “[i]n general, constituents with low molecular weights and/or low viscosities have higher spreading properties. Thus, the choice of emollients is essential to control the efficacy of the product in terms of skin moisturizing, but also to achieve the satisfactory physical and chemical stability of the emulsion” [p. 17, sentences spanning columns 1 and 2].
Roble relates to the synthesis of skin emollients comprising the esterification of aliphatic alcohols and an unsaturated aliphatic fatty acid [title and abstract]. Robles found that “carbon chain lengths of the starting alcohol and the degree of unsaturation of the fatty acids influenced the lubricity of the emollients and thus their suitability as skin emollients” and that shorter carbon chains are preferred [p. 16, lines 10-20].
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have improved the cosmetic compounds disclosed by Saha by shortening the chain length as taught by Gore and desired by Roble. One would have been motivated to shorten the chain length of Saha because Roble disclosed that carbon chains influence the lubricity and shorter chains improve the suitability of emollients for the skin (i.e., addressing the issue of suitability for cosmetic compositions). One would have been motived to shorten the R2 group of the Saha compounds because that group would have provided the most control as it is the longest, and, unlike the R1 group, changes to the R2 group would have changed the final product by only one carbon at a time. One would have had an expectation of success because in both cases, Saha and Roble, relate to making cosmetic compounds. See MPEP 2143 I (C).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the instantly claimed range of bio-based carbon content of 30-100% according to ASTM D6866 overlaps with the range of the prior art (20-100% according to ASTM D6866) and so a prima facie case of obviousness exists.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated a cosmetic composition comprising 6-pentyldodecane and a pigment. Wherein the 6-pentyldodecane has a carbon content within the instantly claimed range. Wherein the composition is, for example, a lotion.
Regarding instant claim 2 and 8, "where 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" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). Given Saha discloses these compounds may be in a cosmetic composition a skilled artisan would have been motivated to discover the optimum ranges by routine experimentation. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated a composition comprising a pigment and 6-pentyldodecane in the presently claimed amount.
Regarding instant claim 3, Saha discloses a compound having the formula:
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wherein n=0 and c=0 [p. 57, lines 1-10]. Therefore Saha teaches the formula:
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wherein R1=H, A may be an unsaturated, partially saturated or saturated furan ring, b=2, x=1, a=1, R2=H, m=1, o=1, R1’=H, d=1 and R3 is selected from a alkyl group having 1-18 carbons; wherein the total carbon count is 20-62 [p. 57, lines 1-20]. Written differently Saha teaches the following compound, for example:
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wherein R3 is selected from an alkyl group having 1-18 carbons; wherein the total carbon count is 20-62 [p. 57, lines 1-20].
In view of the species election, instant claim 3 is interpreted to mean that the composition further comprises a compound of Formula I.
The compound taught by Saha as discussed above most closely relates to the instantly claimed compounds of Formula 1 when a=1, R1=H, A=, R2= a saturated or unsaturated furan ring, and R3= a C1-C8 alkyl:
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According to MPEP 2144.09, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). In the present case, the instantly claimed compounds of Formula I according to instant claim 3 have a very close chemical structure and similar utility (cosmetic compound) to the prior art. Specifically, the compounds of the instant claims may be considered homologous to the prior art because they differ only by successive addition of -CH2-. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have made the compounds of Formula I, according to instant claim 3. Furthermore, given the disclosure of each component individually, it would have been prima facie obvious for a person having ordinary skill in the art at, before the effective filling date of the claimed invention, to have selected and combined known components for their established functions with predictable results by following the teachings of Saha. MPEP 2143 and 2144.06(I).
Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated a composition comprising 6-pentyldodecane, a pigment and further comprising a compound of instant formula I wherein at least one of R1, R2, or R3 is either a furan ring or a tetrahydrofuran ring.
Regarding instant claim 4, according to Saha, the compounds disclosed therein have “a bio-based content in the range of 20 to 100%, according to ASTM-D6866” [p. 22, lines 29-30].
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05(I). In the present case, the instantly claimed range of bio-based carbon content of 30-100% according to ASTM D6866 overlaps with the range of the prior art (20-100% according to ASTM D6866) and so a prima facie case of obviousness exists.
Regarding instant claim 6 and 13, Saha discloses the personal care composition (i.e., cosmetic composition) may comprise emulsifiers [p. 6, line 35] and that in some cases compositions comprising the oil disclosed therein may be in the form of emulsions, such as water-in-oil and oil-in-water [p. 21, line 14].
"[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" (see MPEP 2144.05 IIA quoting In re Aller, 220 F.2d 454, 456 (105 USPQ 233)). Given Saha teaches emulsions comprising the oil compounds disclosed therein, a skilled artisan would have been motivated to discover the optimum balance of water and oil in the emulsion by routine experimentation. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated a cosmetic composition in the form of an emulsion and comprising a pigment, 6-pentyldodecane and a compound of instant Formula I in the presently claimed amount.
Regarding instant claims 22 and 23, Regarding instant claim 2, Saha discloses a compound having the formula:
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wherein b=1, a=0, m=0, n=0, o=1, c=0 and d=1 [p. 57, lines 1-10]. Therefore Saha teaches the formula:
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wherein R1 and R1’ are C1-18 alkyls, A may be an unsaturated, partially saturated or saturated furan ring, and R3 is selected from a alkyl group having 1-18 carbons; wherein the total carbon count is 20-62 [p. 57, lines 1-20]. Written differently Saha teaches the following compound, for example:
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wherein R1 and R3 are selected from a alkyl group having 1-18 carbons; wherein the total carbon count is 20-62 [p. 57, lines 1-20].
According to MPEP 2144.09, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). In the present case, the instantly claimed compounds of Formulas IV and V have very close chemical structure and similar utility (cosmetic compound) to the prior art. Specifically, the compounds of the instant claims may be considered homologous to the prior art because they differ only by successive addition of -CH2-. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have prepared the compounds of Formulas IV and V following the teachings of Saha. Furthermore, given the disclosure of each component individually, it would have been prima facie obvious for a person having ordinary skill in the art at, before the effective filling date of the claimed invention, to have selected and combined known components for their established functions with predictable results by following the teachings of Saha. MPEP 2143 and 2144.06(I). Therefore, it would have been obvious for one of ordinary skill in the art, before the effective filling date of the claimed invention, to have formulated a composition comprising 6-pentyldodecane, a pigment and further comprising a compound of instant Formulas IV and/or V.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-8, 10, 12, 13, 21-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11, 13, 23, 33, 34, 36-40, and 42-50 of copending Application No. US20210040055A1 (16/639,314) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims recite a personal care composition comprising a base oil and an effective amount of an additive such as a pigment, emulsifiers and UV blockers [claim 42], wherein the oil may be 6-pentylheptadecane, 5,5'-(dodecane-1,1-diyl)bis(2-methylfuran) and 5,5'-(dodecane-1,1-diyl)bis(2-methyltetrahydrofuran) [claim 46].
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According to MPEP 2144.09, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979). In the present case, the instantly claimed compounds have very close chemical structures and similar utility (cosmetic compound) to the conflicting claims. Specifically, the compounds of the instant claims may be considered homologous to the conflicting claims because they differ only by successive addition of -CH2-. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, to have a cosmetic composition comprising the compounds as instantly claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/C.T.W./ Examiner, Art Unit 1612
/WALTER E WEBB/ Primary Examiner, Art Unit 1612
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