CTFR 17/432,673 CTFR 101333 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 12-151 AIA 26-51 12-51 Status of Claims Claims 1-3 are previously presented. Claims 4-6 and 8-10 are original. Claim 7 is currently amended. Claims 11-20 are new. Claims 1-20 are pending and under examination. Priority The instant application, which is a national stage entry of PCT/US2020/026812 filed on 04/06/2020, which claims priority from the U.S provisional application 62/835,666, filed on 04/18/2019. Information Disclosure Statement The information disclosure statements from 08/20/2021 and 12/05/2023 have been considered by the examiner. Withdrawn Objections The objection to claim 3 is withdrawn due to applicant’s amendment modifying ‘titantate” to “titanate”. The specification objections are withdrawn due to applicants’ amendments to table 1. New Claim Rejections - 35 USC § 112 (b) – As required by applicant’s amendments/New claims: 07-30-02 AIA 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. 07-34-01 Claim 11-20 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. Claim 11 recites An aminosiloxane/alkyl silane blend “consisting of” components (a)-(d), wherein component (a) is present in an amount of 0.2 to 15 wt%, (b) is present in an amount of 1 to 20 wt%, (c) is present in an amount of 5 to 75 wt%., (d) is present in an amount of 15 to 93.8 wt%. Because claim 11 uses the closed transition phrase “consisting of”, the claimed blend is limited to the recited components. However, the credited concentrations is lower than 100 wt%. when each component is collectively recited at their lower endpoints and higher than 100 wt%. when each component is recited at their upper endpoints, which renders the composition mathematically impossible, and thus indefinite. A suggested amendment is to specify that the that the recited components collectively total to 100 wt%. of the composition, for example, by reciting: “wherein the amounts of components (a), (b), (c), and (d) have a sum of 100 wt%. of the entire blend”. Claims 12-20 are also rendered indefinite for being dependent on indefinite claim 11. New Claim Rejections - 35 USC § 112 (d) As required by applicant’s amendments: 07-36 AIA 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 13 and 17-20 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 13 recites that the condensation catalyst of claim 11 “includes a titanate”, which does not clearly impose an additional limitation on the catalyst already encompassed by claim 11, while in fact broadening it, as claim 11 already recites that the condensation catalyst is “selected from the group consisting of organic titanates, organic zirconates and mixtures thereof”. Accordingly, claim 13 does not further limit claim 11 since titanate encompasses both inorganic and organic forms in a closed claim (consists of). The claim would be rendered proper, for example, by amending the statement of claim 13 from “…includes a titanate” to “…is an organic titanate”. Claim 17 recites that “the aminosiloxane/alkyl blend comprises …”, thereby broadening the closed transition phrase of its parent claim 11, which states “consisting of”. The claim would be rendered proper, for example, by replacing the transition phrase of claim 17 from “comprises” with “consists of”. Claim 18-20 are also rejected for being dependent on claim 17. Applicant may cancel the above 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 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-20-02-aia AIA 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. Rejections maintained: Prior art references unchanged, claim mapping unchanged, obviousness statement unchanged. 07-21-aia AIA Claim s 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Jean Mondet et al (WO2008148809A1, publication date: 12/11/2008) (Hereinafter Mondet) and Tsunehito Sugiura et al (WO2018186138A1, publication date: 10/11/2018) (Hereinafter Sugiura), evidenced by Universal Selector (XIAMETER™ OFS-6106 Silane, Technical DataSheet, Supplied by Dow, last edited date: 09/09/2024) (Hereinafter Universal Selector). The Google English translation document of Sugiura will be used to address the instant claim limitations below . Regarding claim 1, the “for imparting hydrophobicity to hair” language is interpreted as intended use which does not constitute a structural limitation. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Mondet teaches “a kit for coating keratin materials . . . the kit comprising at least one compound (X) and at least one compound (Y) capable of reacting together via a condensation reaction, and optionally at least one catalyst, the said compounds X and Y, which may be identical or different, each comprising an organic polymer main chain POL bearing at least two alkoxysilane functionalized reactive groups A which are pendent on the main chain or located at the ends of the said main chain, on condition that when the compound comprises reactive end groups, each end of the compound bears at least one of the said reactive groups” (claim 1) “characterized in that it comprises a catalyst” (claim 2) “characterized in that the catalyst is present in one or other of the compositions comprising X and/or Y” (claim 3) “characterized in that the catalyst is chosen from organometallic compounds of metals such as titanium, tin and bismuth, basic compounds and organic or mineral acids, and mixtures thereof” (claim 5) wherein the titanium-based catalysts are “titanates” (page 38 line 29) such as “titanium di-n-butoxide, titanium diisopropoxide (bis-2 , 4-pentanedioate) , titanium diisopropoxide bis (ethyl acetoacetate) , titanium 2-ethylhexoxide, titanium trimethylsiloxide” (organic titanates) (page 38 lines 30-34) “characterized in that the catalyst is present in a content ranging from 0.0001% to 20% by weight relative to the total weight of the composition comprising it” (claim 6) “characterized in that each compound X and Y comprises more than two alkoxysilane functionalized reactive groups (A) , the said reactive groups being located laterally on the polymer chain and optionally at one or both ends of each compound” (claim 20) comprising “3-glycidoxypropyltrimethoxysilane” (claims 21 and 23) at from 0.5% to 95% by weight (either claim 51 or 52), and “polydimethylsiloxanes (PDMS)” (claim 58, page 45 line 26) ranging from 1% to 90% by weight (claim 55, page 48 lines 5-12). The instantly claimed “0.2 to 15 wt% of a cosmetically acceptable condensation catalyst selected from the group consisting of organic titanates, organic zirconates and mixtures thereof” limitation is met by Mondet’s teaching of organic titanates discussed above. The instantly claimed range of 0.2-15 wt% range is within the 0.0001% to 20% by weight range taught by Mondet. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 I. Regarding the instantly selected species of Xiameter OFS-6106 for instantly claimed formula II, evidentiary reference Universal Selector provides the evidence that said species is “Glycidoxypropyltrimethoxysilane” (page 1). As discussed above, Mondet teaches this species and the instantly claimed 5-75 wt% range is within the 0.5-95 wt% range taught by Mondet. Regarding the instantly claimed formula II and its 15-93.8 wt% range, Mondet teaches PDMS as discussed above which meets the instantly claimed chemical structure requirements. The instantly claimed 15-93.8 wt % range overlaps with the 1-90 wt% range taught by Mondet. Regarding claims 2-10, Mondet teaches as discussed above. Regarding claims 1 and 7, while Mondet teaches two reactive polymers (X and Y) each having alkoxysilane functional groups, Mondet does not teach the instantly claimed Bis-Hydroxy/Methoxy Amodimethicone (trade name: Dowsil AP-8087) species for instantly claimed formula I. Regarding claim 1, Sugiura teaches a cosmetic composition (abstract) as hair treatment comprising an amino-modified silicone as Dow Corning AP-8087 at 1 wt % (formulation example 6 on page 18). The 1 wt % taught by Sugiura is within the instantly claimed 1-20 wt %. "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." MPEP 2131.03 I. Regarding claim 7, Sugiura’s teaching of 1 wt % is interpreted to be merely close to the instantly claimed 1.5-17 wt % range. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. MPEP 2144.05 I. That said, Sugiura also teaches aminosilicone amounts at 3 wt % (prescription example 1), at 2 wt % (prescription example 2), and at 1.75 wt % (prescription example 3). It would have been obvious to one of ordinary skill in the art before the time of instant application to have combined the teachings of Mondet and Sugiura and achieve the instant invention. Mondet teaches including film-former polymer (page 56 line 33) and silicones (page 39 lines 27-31). Mondet aims to achieve cosmetic compositions enabling the production of a film deposited on keratin materials, which has good transfer-resistance properties and/or good properties of staying power over time (page 2 lines 35-38). Sugiura merely provides well known silicone fluid such as AP-8087. Incorporating AP-8087 into Mondet is interpreted as merely combining prior art elements according to known methods to yield predictable results. Additionally, Sugiura also provides the motivation of “a smooth feeling of use and finish on the hair or skin, water resistance and friction resistance, sebum resistance, makeup durability, It is possible to provide cosmetics excellent in flexibility and uniformity, particularly hair cosmetics. In addition to cosmetic applications, as a film-forming agent, it is used for all film applications that require water repellency (water resistance), oil repellency (oil resistance), friction resistance, flexibility, and integrity” (page 3 paragraph 4). Thus, a person of ordinary skill in the art would be motivated to incorporate the teachings of Sugiura into the teachings of Mondet with a reasonable expectation of successfully achieving a cosmetic formulation with water repellency (water resistance), oil repellency (oil resistance), friction resistance, flexibility, and integrity . Response to Arguments 07-37 AIA Applicant's arguments filed 06/18/2025 have been fully considered but they are not persuasive. 07-37-13 AIA In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller , 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). 07-37-03 AIA In response to applicant's 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). 07-37-04 AIA In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine , 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones , 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc. , 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, a person of ordinary skill in the art would be motivated to incorporate the teachings of Sugiura into the teachings of Mondet with a reasonable expectation of successfully achieving a cosmetic formulation with water repellency (water resistance), oil repellency (oil resistance), friction resistance, flexibility, and integrity . In response to applicant’s argument that Mondet requires components X and Y and that Sugiura discloses a distinct formulation system necessarily containing a vinyl polymer having a carbosiloxane dendrimer structure in the side chain, the argument is not persuasive, at least with respect to claims 1-10, because the claims recite the open-ended transitional phrase “comprising”. Accordingly, the claims do not exclude additional elements such as Mondet’s X/Y components or Sugiura’s additional vinyl polymer components. The rejection collectively relies on Mondet for the recited catalyst, alkyl silane, and polydimethylsiloxane components, and further relies on Sugiura for the claimed aminosiloxane species, with both references being analogous art. Thus, the presence of additional components in the recited references does not patentably distinguish the open-ended claims allowing other components of the prior art. Examiner Comments Claims 11-20 were found to be free of the prior art and the closest prior is the prior art of record (prior art teaches other needed compounds other than those listed in these “consisting of” claims), however, the claims have rejections under USC 112(b) and USC 112(d). If applicant corrects these issues in the claims without incorporating new issues, then applicant will have allowable claims. If applicant decides on pursuing claims 11-20, applicant might consider filing an after final response with appropriate claim cancellations and corrective amendments. Conclusions No claim is found allowable. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL . See MPEP § 706.07(a). 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 ARYA AHMADI BAZARGANI whose telephone number is (571)272-0211. The examiner can normally be reached Monday - Friday 9:00AM - 5:00 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian-Yong Kwon can be reached at (571) 272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. Arya A. Bazargani, Ph.D. Patent Examiner Art Unit 1613 /MARK V STEVENS/Primary Examiner, Art Unit 1613 Application/Control Number: 17/432,673 Page 2 Art Unit: 1613 Application/Control Number: 17/432,673 Page 3 Art Unit: 1613 Application/Control Number: 17/432,673 Page 4 Art Unit: 1613 Application/Control Number: 17/432,673 Page 5 Art Unit: 1613 Application/Control Number: 17/432,673 Page 6 Art Unit: 1613 Application/Control Number: 17/432,673 Page 7 Art Unit: 1613 Application/Control Number: 17/432,673 Page 8 Art Unit: 1613 Application/Control Number: 17/432,673 Page 9 Art Unit: 1613 Application/Control Number: 17/432,673 Page 10 Art Unit: 1613 Application/Control Number: 17/432,673 Page 11 Art Unit: 1613
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