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
Claims 2, 5, 7, 10-12, 15 and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Response to Arguments
All of Applicant’s arguments filed 12/30/2025 have been fully considered.
112(b) Rejection
In view of the amendments filed, the 112(b) rejections presented in the office action mailed on 10/21/2025 are withdrawn as the issues have been resolved.
103 Rejection
Applicant argues that they have developed formulations that provide longer lasting dyeing of keratin fibers without the negative side effects.
This is not persuasive as it is unsupported by factual evidence.
Applicant argues that WO’390 is related to compositions intended to perfume or sanitize and there is no disclosure of a composition that provides long-lasting color to keratin materials.
It seems Applicants are arguing that WO’390 is non-analogous, however, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the instant invention and WP’390 are directed to compositions comprising reaction mixtures of APTES and MTES.
Applicant also argues that based on the disclosure of WO’390 there is no expectation that the claimed silane mixture would results in a composition having improved dyeing performance.
This is not persuasive, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Applicant has provide no evidence that the claimed mixture provides an unexpectedly improved dyeing performance.
Applicant argues that Issa discloses many variables when producing alkoxysilanes and make no mentioned of that the claimed mixture would results in a composition having improved dyeing performance.
This is not persuasive for the same reasons discussed above.
Applicant argues that the office has not provided a reasoning that supports how and why the combination of references would have been made relative to the claimed composition. Why would a skilled artisan looking to develop hair dyes look at compositions intended to perfume or for use in the treatment of keratin material.
It seems Applicants are arguing that WO’390 is non-analogous, this is not persuasive for the same reasons discussed above. With respect to the composition being intended for treating a keratin material it is noted that the claimed “cosmetic composition” and “the composition is used for treating keratinous material” are recitations of intended use. As the prior art makes obvious a composition comprising the claimed compounds, the composition is expected to be capable of being used as a cosmetic for treating keratinous materials absent evidence to the contrary.
Claim Objections
Claims 1, 8, 13, 18 and 25 are objected to because of the following informalities: These claims recite “further free bonds”, the claims should simply recite “free bonds”. Appropriate correction is required.
New Claim Rejections - 35 USC § 112(b)
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 1, 3-4, 6, 8-9, 11, 13-14, 16 and 18-20 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.
In claim 1, Formulas (II), (III) and (IV) have multiple variables indicated as “*” and this is defined to be “the further free bond valence” the phrase “the further” has insufficient antecedent basis for in the claim. For purposes of examination the claim will be interpreted as saying “* represents the free bond valences…”
Claims 3-4, 6, 9, 11, 13-14, 16, 19-20 and 25 are rejected in view of their dependency on claim 1. These claims do not cure the deficiencies of claim 1 and thus contain the same deficiencies.
Maintained/Modified 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.
Claim(s) 1, 3-4, 6, 8-9, 11, 13-14, 16, 18-20 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2008/132390 and Issa (NPL).
The instant claims are directed to cosmetic compositions comprising a mixture of compounds of formula (I) – (IV).
The instant published application teaches that the preparation of these compositions comprising the claimed mixture of silanes is possible, for example, by reacting the monomeric C1-C6 alkoxy silanes (a) of the formula (I) with water, the selected amounts of C1-C6 alkoxy silanes and water being co-determinant for the proportions in which the silanes (a), (b), (c) and (d) are formed [0152]. The instant specification teaches that due to the high reactivity of the C1-C6 alkoxy silanes of formula (I), complex mixtures of hydrolyzed or condensed silanes are formed when they react with water. The exact composition of these mixtures is determined primarily by the molar amounts in which silanes (a) of formula (I) and water are used, respectively, in the reaction leading to the mixture of (a), (b), (c) and (d) [0155]. The water content of the composition should be limited to 0.001-10% [0182].
The instant specification, as published, teaches a method of preparing a blend of silanes by reacting methyltrimethoxysilane (MTES) (34.283mol), with APTES (6.008 mol) with 37.18mol water, this results in a molar ratio of MTES / APTES of 5.71 and silanes/water of 1.08. An analysis of the obtained blend identified compounds of formula I-IV in the molar amounts as recited by the instant claims.
WO’390 teaches a composition in the form of a gel [0001]. The gel is formed by polymerization of specific polymerizable reagents [0016]. The gel can be obtained by polymerization of a polymerizable reagent comprising one or more alkoxysilanes and/or chlorosilanes, di- or tri-functional, in the presence of water [0018]. Triethoxysilanes such as alkyltriethoxysilanes, of which methyltriethoxysilane is the most common, work very well in mixtures with 3-aminopropylmethyldiethoxysilane[0036]. MTES and APTES are also suitable for use [0039-0040]. The polymerization reagents are taught to make up 1-50% of the composition and water is present in amounts of 1-10% [0084-0086].
Example 1 of WO’930 teaches reacting 40g of methyltrimethoxysilane (MTMS), 10g of 3-aminopropylmethyldiethoxysilane and 63g water.
Example 1 of WO’930 teaches reacting 44g of MTES, 10g of 3-aminopropylmethyldiethoxysilane and 9g water.
WO’930 teaches MTMS and MTES to both be suitable alkoxysilanes for use, thus the use of MTES in both examples is prima facie obvious as substitution of one equivalent for the other is prima facie obvious. WO’930 teaches 3-aminopropylmethyldiethoxysilane and APTES to both be suitable alkoxysilanes for use, thus the use of APTES in both examples is prima facie obvious as substitution of one equivalent for the other is prima facie obvious.
Using the molecular weight of MTES and APTES provided in the instant specification:
Example 1 has a weight ratio of MTES/APTES of 6.44 and silanes/water of 3.5.
Example 2 has a weight ratio of MTES/APTES of 4.87 and silanes/water of .8.
Issa teaches the kinetics of alkoxysilane and teaches that the kinetics of polymerization are controlled by primary factors, such as catalysts, water/silane ratio, pH, pH, and organo-functional groups, while secondary factors, such as temperature, solvent, ionic strength, leaving group, and silane concentration, also have an influence on the reaction rates (Abs). The polymerization of alkoxysilane is a complex reaction. It consists of the following three major steps: (1) Hydrolysis, in which the hydroxyl group (OH) substitutes the alkoxyl groups in an acidic, alkaline, or neutral medium in the presence of a catalyst, using homogenizing agents (solvents); (2) condensation, which is the formation of siloxane bridges (Si-O-Si) by removing a water or alcohol molecule from two alkoxysilane molecules. Its kinetics are more complicated than that of hydrolysis, and it has many individual reaction rates. Condensation can occur between molecules and molecules, molecules and particles, or particles and particles; (3) phase separation, where the reaction medium loses its homogeneity to form a liquid in a continuous solid, or a solid (e.g., particles or precipitate) in a continuous liquid, which are, respectively, defined as a gel and a sol. It can also form silsesquioxanes (RSiO1.5)n. The kinetics of all these steps depend mainly on the water/Si ratio (R), catalyst, and nature of the silane, as well as the temperature, pH, solvent, ionic strength (IS), and silane/solvent ratio (pg. 1-2).
As discussed above the instant specification teaches that the claimed compounds of formula I-IV can be formed by reacting MTES, APTES and water in specific ratios and teaches water to be present in the composition in amounts of 1-10%.
WO’930 teaches reacting MTES and APTES in a ratio of 4.85 and 6.44, which are both close to the ratio of 5.71 disclosed in the instant specification, WO’930 also teaches the composition to comprise 1-10% water. While WO’930 does not teach the formation of the claimed compounds, it does teach reacting MTES, APTES and water which are stated by the instant specification to result in the claimed compounds, therefore, the composition of WO’930 is expected to comprise the claimed compounds absent factual evidence to the contrary. Furthermore, as demonstrated by Issa it is known in the art that the polymerization kinetics can be affected by controlling factors such as water and silane ratio, therefore, it would have been prima facie obvious for a person of skill in the art to optimize the polymerization parameters to control the kinetics and rates of polymerization (i.e. hydrolysis, condensation, etc.) to control the reaction and result in a composition including the molar amounts of each compound as claimed.
Regarding the claimed “cosmetic composition” and “the composition is used for treating keratinous material” these are recitations of intended use. MPEP 2111.02 states that “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. During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim.
As the prior art makes obvious a composition comprising the claimed compounds, the composition is expected to be capable of being used as a cosmetic absent evidence to the contrary.
Conclusion
No claims are 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 Jennifer A Berrios whose telephone number is (571)270-7679. The examiner can normally be reached Monday-Thursday from 9am-4pm and Friday 9am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian 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.
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/JENNIFER A BERRIOS/Primary Examiner, Art Unit 1613