DETAILED ACTION
Status of the Application
Receipt is acknowledged of Applicants’ Request for Continued Examination (RCE) and Remarks, filed 24 February 2026, in the matter of Application N° 17/198,629. Said documents have been entered on the record. The Examiner further acknowledges the following:
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 8, 2025 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
No additions, amendments, or cancellations have been made to the claims filed 17 September 2025.
No new matter has been added.
Thus, claims 21-28, 30-35, and 37-40 continue to represent all claims currently under consideration.
Information Disclosure Statement
No new Information Disclosure Statement(s) (IDS) have been filed for consideration.
Maintained Rejections
The following rejections are maintained from the previous Office Correspondence dated 25 November 2025 since the previously cited reference continues to read on the instantly recited limitations.
Nonstatutory 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 21-28, 30-35, and 37-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-35 of Akthakul et al. (USPN 11,160,827 B2). Although the claims at issue are not identical, they are not patentably distinct from each other.
The key difference between the reference and instant claims is that reference claims 1 and 29-33 disclose specific amounts for Polymers A and B in the first part of the composition, whereas none of independent claims 21, 34, or 35 recite amounts within either of the first or second parts. Amounts of Polymers A, B, and C are recited by instant dependent claims 26-28. These limitations are read on by reference claims 10-13 and 19-24.
The remainder of the claims at issue are considered to read on one another as they overlap in their teachings of the reinforcing component, the catalyst, and the amount of catalyst present in the second component of the composition.
Thus, based on the teachings of the reference ‘827 patent, the Examiner respectfully submits that a person of skill in the art, at the time of the filed invention would have had a reasonable expectation of success in achieving the instantly claimed composition, notably as they are prima facie obvious variants of one another.
Response to Arguments
Applicants’ filed response to the rejection of claims 21-28, 30-35, and 37-39 on the grounds of nonstatutory double patenting over the patented teachings of Akthakul et al. (USPN 11,160,827) has been fully considered, but is not persuasive.
Applicants again traverse the rejection alleging that “[n]one of the reference claims recite a specific combinations of all elements in claim 21, such as the combination of elements (i) to (vii)”. The asserted missing elements are as follows, followed by disclosures as presented in the claims:
Polymer A … having a viscosity of about 165,000 cSt at about 25ºC (see e.g., final clause of claim 1 in the ‘827 patent);
Polymer B … having a viscosity of about 45 cSt at about 25ºC (see e.g., final clause of claim 1 in the ‘827 patent);
The molar ratio of the Si-H units to the alkenyl-functional groups in the first part is from about 23:1 to about 90:1 (see e.g., claims 19 and 20 of the ‘827 patent);
Polymer C … having a viscosity of about 200 cSt and below 4,000 cSt at about 25ºC (see e.g., claim 1 of the ‘827 patent);
The molar ratio of alkenyl-functional group from said Polymer A to alkenyl-functional group from Polymer C is about 10:1 to about 1:10 (see e.g., claim 24 of the ‘827 patent);
The layer formed over the skin has a set-to-touch time or tack-free time of less than 4 minutes (see e.g., claims 15 and 16 of the ‘827 patent); and
The kit further comprises a cleanser (see e.g., claim 34 of the ‘827 patent).
Further, in response to Applicants’ argument that the Examiner’s conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
As shown above, the asserted missing elements are clearly nested within the claims of the reference patent. At most, the reference presents overlapping disclosure for the instantly recited ratio range of element (iii). A ratio range of about 23:1 to about 90:1 is recited and a ratio range of about 0.2:1 (1:5) to about 60:1 is disclosed in claim 19 and a narrower ratio range of about 15:1 to about 45:1 is disclosed in claim 20. The Examiner submits that the overlapping disclosure renders the instantly recited ratio range obvious. See MPEP §2144.05(I).
Summarily, and contrary to the assertion, the ‘827 patent renders the recited limitations of claim 21 obvious, thereby making the respective claim sets obvious variants of one another.
Applicants’ next point of traversal addresses the Examiner’s reliance upon claim 23 of the reference which discloses a Polymer A/Polymer C ratio range of about 100:1 to about 1:100. Applicants subsequent reliance upon MPEP §804 is acknowledged, but unpersuasive, particularly since claim 24 discloses the exact range recited by the instant claims. Thus, while the Examiner maintains that claim 23 of the reference does in fact encompass the instantly recited A/C ratio range, claim 24 expressly discloses the range, thereby lending support to the obviousness aspect of the instantly claimed variant.
Applicants’ arguments, for the above reasons, are found unpersuasive. Said rejection is therefore maintained.
Allowable Subject Matter
Claim 40 is 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.
All remaining claims under consideration remain rejected; no claims are allowed.
Conclusion
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jeffrey T. Palenik whose telephone number is (571) 270-1966. The Examiner can normally be reached on 9:30 am - 7:00 pm; M-F (EST).
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert A. Wax can be reached on (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jeffrey T. Palenik/
Primary Examiner, Art Unit 1615
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