DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 38-44 are withdrawn.
Claims 23-37 are pending and represent all claims currently under consideration.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/19/2025 has been entered.
Response to Arguments
Applicant's arguments filed 12/19/2025 have been fully considered but they are not persuasive.
Applicant argues that Colaco fails to teach, disclose, or suggest all the elements of the amended claim 23, specifically water in an amount ranging from 0-5 to 15% by weight (Remarks, page 19, “B”). This argument is not persuasive, because Colaco exemplifies a composition comprising 12% water by weight (Colaco, page 9, table 2), which lies within the claimed range.
Applicant argues that Colaco’s organosilane-functionalized inorganic oxide particles are the product of functionalizing silica with siloxanes, and are characterized as silica particles-Si-O-Si(OCH2CH3)3 (Remarks, page 20, “1”; page 21, “2”). This argument is not persuasive, because as stated previously, Colaco describes alkoxysilanes as a coating (Colaco, page 1, paragraph 0007), which suggests a chemical reaction to form a functionalized particle is not required as stated by the Applicant. Further, Colaco teaches the silica particles may be “treated with an alkoxysilane” (Colaco, page 3, paragraph 0038), which also suggests a chemical reaction is not required. Colaco further states that mixtures of alkoxysilanes are contemplated to be appropriate for use in the invention (Colaco, page 3, paragraph 0038).
Applicant states that the previous response acknowledges Applicant’s argument that “the compositions of Colaco comprise functionalized silica particles” (Remarks, page 21, “2”). This argument is not persuasive, because the “functionalized silica particles” of Colaco refer to epoxysilane-functionalized silica particles (Colaco, claim 2) and the functionalization of the silica particles with epoxysilane is separate from the argument of alkoxysilanes being included in the composition.
Applicant states that a person of ordinary skill in the art would not have been motivated to modify Colaco to include either of the two alkoxysilanes listed in paragraph [0038], because these alkoxysilane compounds are simply two of a large number of compounds used to functionalize silica particles and there is no suggestion or teaching that such compounds should ever be added to the compositions themselves (Remarks, pages 20-21, “1”). As stated above, Colaco teaches the silica particles may be “treated with an alkoxysilane” (Colaco, page 3, paragraph 0038), which also does not suggest a chemical reaction is required, and further states that mixtures of alkoxysilanes are contemplated to be appropriate for use in the invention (Colaco, page 3, paragraph 0038). Further, the prior art’s mere disclosure of more than one alternative embodiment does not constitute teaching away from any of these alternatives. See MPEP § 2123(II). Therefore, it would have been prima facie obvious to one of ordinary skill in the art to have utilized the compounds selected from the list taught by Colaco, as stated previously by the Examiner.
Applicant argues that there is no motivation to modify the teachings of Colaco to arrive at the claimed invention recited in the amended claim 23 (Remarks, pages 21-22) and that the rejection relies on impermissible hindsight (Remarks, pages 22-23) because there would have been no reason to use the two alkoxysilane compounds together (Remarks, pages 22-23, “C”). This argument is not persuasive, because Colaco teaches mixtures of these compounds are appropriate for use (Colaco, page 3, paragraph 0038). Therefore, it would have been prima facie obvious to one of ordinary skill in the art to have utilized the teachings of Colaco as previously stated by the Examiner.
Maintained Objection to the Specification
The use of the terms Evonik, Dynasylan, Sigma-Aldrich, Shin-Etsu, Gelest, Siltech, Silmer, SiSiB, BASF, Timica, Cloisonne, Chromalite, Colorona, Eckart, Merck, Gemtone, Xirona, Toyal, Wacker, Henkel, Dow Corning, Daito, Tego, Xiameter, Silsoft, Geniosil, VWR, SunPURO, Garnier, SunChemical, Minolta, which are trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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.
Claim 31 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.
Claim 31 recites the limitation "the radicals R1". There is insufficient antecedent basis for this limitation in the claim.
Modified/Maintained Claim Rejections - 35 USC § 103
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.
Claims 23-25, 27-28, 30-31, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Colaco (US 20130291883 A1), as evidenced by Ataman Chemicals. The references were previously cited by the Examiner.
Regarding claim 23, Colaco teaches a composition comprising a cosmetic particulate to shape or style (i.e., treat) a keratin fiber (Colaco, claim 1), wherein the particulate can be silicon-based particulates comprising polydimethylsiloxanes (i.e., a non-amino silicone of “formula III”; Colaco, page 3, paragraph 0040), pigments (i.e., a coloring agent), or combinations thereof (Colaco, claim 1). Polydimethylsiloxanes are evidenced by Ataman Chemicals have the chemical formula CH3[Si(CH3)2O]nSi(CH3)3 (Ataman Chemicals, page 1, line 3), wherein “n” represents an unspecified number of repeating monomer units (i.e., a non-amino silicone of “formula III” in which R1, R2, R3, and A are alkyl groups containing 1 carbon atom; m = 2; n = 1; X is a hydrogen atom; p=1; q, k, j, t, and y = 0; and x, y, and z can be any integer, overlapping the claimed range of x+y+z ≥ 4; Ataman Chemicals, page 1, last paragraph). 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). Colaco exemplifies a composition comprising 12% water by weight (Colaco, page 9, table 2), which lies within the claimed range. Colaco further teaches the particles may contain tetraethoxysilane (i.e., an alkoxysilane of “formula I” in which R’a, R’b, R’c, and R’d are alkyl groups containing 2 carbon atoms), n-octyltriethoxysilane (i.e., an alkoxysilane of “formula II” in which R0 is an alkyl group containing 8 carbon atoms, R’ is an alkyl group containing 2 carbon atoms, and p is 1), or mixtures thereof (Colaco, page 3, paragraph 0038).
Colaco is considered to be analogous to the claimed invention, because both are in the same field of alkoxysilane-containing compositions for treating keratin fibers. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the teachings of Colaco to combine and use the siloxane and two silanes together, arriving at the claimed invention, because Colaco teaches mixtures of these compounds are appropriate for use (Colaco, page 3, paragraph 0038).
Regarding claim 24, Colaco teaches all the elements of the current invention as applied to claim 23. Colaco teaches tetraethoxysilane (i.e., an alkoxysilane of “formula I” in which R’a, R’b, R’c, and R’d are identical and denote ethyl radicals; Colaco, page 3, paragraph 0038).
Regarding claim 25, Colaco teaches all the elements of the current invention as applied to claim 23. Colaco teaches tetraethoxysilane (Colaco, page 3, paragraph 0038).
Regarding claim 27, Colaco teaches all the elements of the current invention as applied to claim 23. Colaco teaches n-octyltriethoxysilane (i.e., an alkoxysilane of “formula II” in which R’ are identical alkyl groups containing 2 carbon atoms and p is 1; Colaco, page 3, paragraph 0038).
Regarding claim 28, Colaco teaches all the elements of the current invention as applied to claim 27. Colaco teaches n-octyltriethoxysilane (i.e., an alkoxysilane of “formula II” in which R0 is an alkyl group containing 8 carbon atoms; Colaco, page 3, paragraph 0038).
Regarding claim 30, Colaco teaches all the elements of the current invention as applied to claim 23. Colaco teaches polydimethylsiloxanes (i.e., a non-amino silicone of “formula III” in which R2 and R3 are alkyl groups containing 1 carbon atom; and j, k = 0; Colaco, page 3, paragraph 0040).
Regarding claim 31, Colaco teaches all the elements of the current invention as applied to claim 30. Colaco teaches polydimethylsiloxanes (i.e., a non-amino silicone of “formula III”). As above, polydimethylsiloxanes as evidenced by Ataman Chemicals have the chemical formula CH3[Si(CH3)2O]nSi(CH3)3 (Ataman Chemicals, page 1, line 3), wherein “n” represents an unspecified number of repeating monomer units (i.e., a non-amino silicone of “formula III” in which R1 and R2 are alkyl groups containing 1 carbon atom; m = 2; n = 1; j, y = 0; and x and z can be any integer, overlapping the claimed range of x+z ≥ 4; Ataman Chemicals, page 1, last paragraph). 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).
Regarding claim 37, Colaco teaches all the elements of the current invention as applied to claim 23. Colaco teaches ethyl alcohol (i.e., an organic solvent chosen from C1-C4 lower alkanols; Colaco, page 10, paragraph 0129, “example VII”).
Claims 26 and 34-35 are rejected under 35 U.S.C. 103 as being unpatentable over Colaco (US 20130291883 A1) as applied to claims 23-25, 27-28, 30-31, and 37, further in view of Cauvin (WO 2015122989 A1). The references were previously cited by the Examiner.
Regarding claim 26, Colaco teaches all the elements of the current invention as applied to claim 23. Colaco teaches tetraethoxysilane (i.e., an alkoxysilane of “formula I”; Colaco, page 3, page 8, paragraph 0038), but does not specify an amount. Cauvin teaches organopolysiloxanes for use in hair care compositions (i.e., compositions for treating keratin fibers; Cauvin, page 1, paragraph 0003), including a branching agent which can be a tetraalkoxysilane such as tetraethoxysilane (Cauvin, page 9, paragraph 0040) in 0.05-10% by weight (Cauvin, page 16, paragraph 0068).
Colaco and Cauvin are both considered to be analogous to the claimed invention, because all are in the same field of siloxane-containing hair care compositions. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Colaco to have included the specified amount of tetraalkoxysilane taught by Cauvin to be preferable (Cauvin, page 16, paragraph 0068), because it would be within the technical grasp of a skilled artisan to formulate a cosmetic with an appropriate amount of the silane.
Regarding claim 34, Colaco teaches all the elements of the current invention as applied to claim 23. Colaco teaches siloxane compounds, but not those which specifically match the chemical structure of “formula IIIc”. Cauvin, however, teaches substantially linear organopolysiloxanes to have a chemical formula of X1-A-X2, wherein X1 and X2 can be Si(ORb)3 and Rb is an alkyl group (i.e., R2, R’2, and R’’2 are alkyl groups containing 1 carbon atom; Cauvin, page 6, paragraph 0029); and A is a polymer chain (Cauvin, page 6, paragraph 0029) which can be polydiorganosiloxane of units of “-R22SiO-“, wherein R2 can be a hydrocarbon with 1 carbon (i.e., R1 is an alkyl group containing 1 carbon atom; Cauvin, page 6-7, paragraph 0030). The term “polymer chain” suggests repeating units of the formula “-R22SiO-“, or greater than 1 unit, which overlaps the claimed range of “n+i = 0-510”. 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). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the siloxane compound taught by Colaco for the alternative of formula X1-A-X2 taught by Cauvin, because combining branching agents and substantially linear organopolysiloxanes is considered a simple and inexpensive method of making branched organopolysiloxanes for hair care products (Cauvin, page 2, paragraphs 0010-0011).
Regarding claim 35, Colaco teaches all the elements of the current invention as applied to claim 34. Colaco teaches siloxane compounds, but not specifically matching the chemical structure of “formula IIIc”. As above, Cauvin teaches the organopolysiloxane to have a chemical formula of X1-A-X2, wherein X1 and X2 can be Si(ORb)3 and Rb is an alkyl group (i.e., R2, R’2, and R’’2 are alkyl groups containing 1 carbon atom; Cauvin, page 6, paragraph 0029); and A is a polymer chain (Cauvin, page 6, paragraph 0029) which can be polydiorganosiloxane of units of “-R22SiO-“, wherein R2 can be a hydrocarbon with 1 carbon (i.e., R1 is an alkyl group containing 1 carbon atom; Cauvin, page 6-7, paragraph 0030). The term “polymer chain” suggests repeating units of the formula “-R22SiO-“, or greater than 1 unit, which overlaps the claimed range of “n+i ≥ 4”. 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). As above, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the siloxane compound taught by Colaco for the alternative of formula X1-A-X2 taught by Cauvin, because combining branching agents and substantially linear organopolysiloxanes is considered a simple and inexpensive method of making branched organopolysiloxanes for hair care products (Cauvin, page 2, paragraphs 0010-0011).
Claims 29, 32-33 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Colaco (US 20130291883 A1) as applied to claims 23-25, 27-28, 30-31, and 37, further in view of Khenniche (Translation of FR 2966355 A1; IDS reference, 07/26/2022), as evidenced by Ataman Chemicals. The references were previously cited by the Examiner.
Regarding claim 29, Colaco teaches all the elements of the current invention as applied to claim 23. Colaco teaches n-octyltriethoxysilane (i.e., an alkoxysilane of “formula II”; Colaco, page 3, paragraph 0038), but does not specify an amount. Khenniche teaches a composition comprising at least one alkoxysilane and at least one silicone (Khenniche claims 1-3) as a treatment of keratin fiber (Khenniche, abstract). Khenniche further teaches the alkoxysilane is octyltriethoxysilane (i.e., an alkoxysilane of “formula (II)”; Khenniche, claim 5) and is present in 0.1-20% and most preferably from 2-15%, overlapping the claimed range of 0.1-30%. 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).
Colaco and Khenniche are both considered to be analogous to the claimed invention, because all are in the same field of alkoxysilane-containing compositions for treating keratin fibers. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Colaco to have included the specified amount of octyltriethoxysilane taught by Khenniche to be preferable (Khenniche, claim 5), because it would be within the technical grasp of a skilled artisan to formulate a cosmetic with an appropriate amount of the silane.
Regarding claim 32, Colaco teaches all the elements of the current invention as applied to claim 30. Colaco teaches polydimethylsiloxanes (i.e., a non-amino silicone; Colaco, page 3, paragraph 0040), but does not specify a structure of formula (IIIa). Polydimethylsiloxanes are evidenced by Ataman Chemicals to have the chemical formula CH3[Si(CH3)2O]nSi(CH3)3 (Ataman Chemicals, page 1, line 3), wherein “n” represents an unspecified number of repeating monomer units (i.e., a non-amino silicone of “formula III” in which a and b can be any integer, overlapping the claimed ranges of a = 0-10, b = 0-500, and a+b ≥ 4; Ataman Chemicals, page 1, last paragraph). Khenniche teaches polydimethylsiloxanes with either trimethylsilyl end groups or dimethylsilanol end groups (i.e., a non-amino silicone of “formula IIIa” in which R’2 and R’’2 are alkyl groups containing 1 carbon atom; Khenniche, claim 8). 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). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Colaco to have included the structure of formula (IIIa) as taught by Khenniche in place of the structure of formula (III) taught by Colaco, because Khenniche presents either trimethylsilyl end groups or dimethylsilanol end groups to be alternatives (Khenniche, claim 8).
Regarding claim 33, Colaco teaches all the elements of the current invention as applied to claim 32. As above, Colaco teaches polydimethylsiloxanes (i.e., a non-amino silicone; Colaco, page 3, paragraph 0040), but does not specify a structure of formula (IIIa). Polydimethylsiloxanes are evidenced by Ataman Chemicals to have the chemical formula CH3[Si(CH3)2O]nSi(CH3)3 (Ataman Chemicals, page 1, line 3), wherein “n” represents an unspecified number of repeating monomer units (i.e., a non-amino silicone of “formula III” in which a and b can be any integer, overlapping the claimed ranges of a = 0-5 and b = 0-10; Ataman Chemicals, page 1, last paragraph). Khenniche teaches polydimethylsiloxanes with either trimethylsilyl end groups or dimethylsilanol end groups (i.e., a non-amino silicone of “formula IIIa” in which R’2 and R’’2 are alkyl groups containing 1 carbon atom; Khenniche, claim 8). 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). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Colaco to have included the structure of formula (IIIa) as taught by Khenniche in place of the structure of formula (III) taught by Colaco, because Khenniche presents either trimethylsilyl end groups or dimethylsilanol end groups to be alternatives (Khenniche, claim 8).
Regarding claim 36, Colaco teaches all the elements of the current invention as applied to claim 23. Colaco teaches polydimethylsiloxanes (i.e., a non-amino silicone of “formula III”; Colaco, page 3, paragraph 0040), but does not specify an amount. Khenniche further teaches the silicone is polydimethylsiloxanes with trimethylsilyl end groups (i.e., a non-amino silicone of “formula (III)”; Khenniche, claim 8) and teaches the silicone in at least 0.01% by weight and most preferably from 0.1-7% (Khenniche, claim 9), overlapping the claimed range of 0.1-25% by weight. 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). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Colaco to have included the specified amount of polydimethylsiloxanes taught by Khenniche to be preferable (Khenniche, claim 9) , because it would be within the technical grasp of a skilled artisan to formulate a cosmetic with an appropriate amount of the siloxane.
Conclusion
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/C.P.J./Examiner, Art Unit 1613
/JENNIFER A BERRIOS/ Primary Examiner, Art Unit 1613