DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed November 06, 2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103 (Maintained)
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.
Claims 1-5, 7, 10, and 13 are rejected under 35 U.S.C. 103 as being as being obvious over Samain et al. (WO 2017/207776 A1 with a foreign translation provided by US 11,291,287 B2).
Examiner’s note: The instant specification states that the vinyl dimethicone which may be used is the Andisil® VS series from AB Specialty Silicones (pg. 11, lines 10-12) and the hydrogen dimethicone which may be used is the Andisil® XL series from AB Specialty Silicones (pg. 13, lines 13-16).
Regarding claims 1 and 13, Samain discloses a two-component composition where the first base product contains reactive silicone, and the second base product contains the catalyst thereof (Col 66, lines 61-67). The “reactive silicone” is a mixture of a polyorganosiloxane bearing a vinyl functional group at the two end chains, such as the Andisil VS range from AB specialty silicones and polyhydrogenosiloxane, such as the Andisil XL range from AB specialty silicones (Col 72, lines 3-20). Samain discloses the first base product includes particles (Abstract), such as cerium oxide (Col 5, line 67). The compositions of the invention are used for cosmetic purposes such as to treat wrinkles (Col 91, lines 61-64; Col 94, lines 63-67).
Samain is not believed to be anticipatory because Samain could be construed as not clearly and unequivocally disclosing the claimed invention or directing those skilled in the art to the claimed invention without any need for picking, choosing and combining various disclosures not directly related to each other by the teachings of the cited reference. Namely, one skilled in the art would need to choose to include cerium oxide (Col 5, line 67) within the silicone composition (Col 72, lines 3-20).
Nevertheless, claim 1 is rendered prima facie obvious over the teachings of Samain, because it is prima facie obvious to combine prior art elements according to known methods, to yield predictable results. In the instant case, all the claimed elements (e.g., two-component composition with silicones in one component and a catalyst in the other, cerium oxide) were known in the prior art (e.g., Samain) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (e.g., a cosmetic composition) to one of ordinary skill in the art. MPEP 2143.A.
Further regarding claim 13, Samain discloses the particles (Abstract) such as cerium oxide (Col 5, line 67) can be surface modified (Col 128, lines 25-Col 129, line 8; Col 128, line 3) and are present in an amount between 3% and 10% by mass relative to the total mass of the first product (Col 5, lines 32-39). 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 A.
Claim 2 is rendered prima facie obvious because Samain discloses polyorganosiloxane bearing a vinyl functional group at the two end chains, such as Andisil VS range from AB specialty silicones (Col 72, lines 3-20).
Claim 3 is rendered prima facie obvious because Samain discloses polyhydrogenosiloxane, such as the Andisil XL range from AB specialty silicones (Col 72, lines 3-20).
Claim 4 is rendered prima facie obvious because Samain discloses the catalyst is a platinum catalyst in a molecular or crystalline structure (Col 72, lines 21-22; Col 66, line 67).
Claim 5 is rendered prima facie obvious because Samain discloses particles (Abstract) such as cerium oxide (Col 5, line 67) can be surface modified (Col 128, lines 25-Col 129, line 8; Col 128, line 3).
Claim 7 is rendered prima facie obvious because Samain discloses particles (Abstract) such as cerium oxide (Col 5, line 67) have a size between 200 nm and 50 microns (Col 127, lines 60-61). A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 10 is rendered prima facie obvious because Samain discloses the base products can be in the form of a W/O emulsion where the oil is silicone (Col 130, lines 9-24).
Claim 6 is rejected under 35 U.S.C. 103 as being as being obvious over Samain et al. (WO 2017/207776 A1 with a foreign translation provided by US 11,291,287 B2) in view of Lee et al. (KR 20190048093 A with a foreign translation provided by US 10,835,464 B2).
The 35 U.S.C. 103 rejection over Samain was previously discussed.
Samain does not disclose the surface modification is performed by treating cerium oxide with stearic acid, as recited in claim 6.
Lee discloses a cosmetic composition with cerium oxide, where the cerium oxide is surface-modified with a fatty acid (Abstract), such as stearic acid (Col 3, line 21). Lee teaches that when cerium oxide particles are surface-modified with a fatty acid they have excellent emulsification/dispersion phase stability (Col 4, lines 10-13).
Since Samain generally teaches a cosmetic composition with surface modified particles, such as cerium oxide, it would have been prima facie obvious to one of ordinary skill in the art to include cerium oxide surface-modified with stearic acid, within the teachings of Samain, because Lee teaches cerium oxide surface-modified with steric acid within a cosmetic composition. An ordinarily skilled artisan would be motivated to use cerium oxide surface modified with stearic acid because Lee teaches that when cerium oxide particles are surface-modified with a fatty acid they have excellent emulsification/dispersion phase stability (Col 4, lines 10-13).
Claims 9 and 11 are rejected under 35 U.S.C. 103 as being as being obvious over Samain et al. (WO 2017/207776 A1 with a foreign translation provided by US 11,291,287 B2) in view of Yu et al. (US 2012/0251600 A1).
The 35 U.S.C. 103 rejection over Samain was previously discussed.
Additionally, Samain discloses particles (Abstract), such as cerium oxide (Col 5, line 67) are present in an amount between 3% and 10% by mass relative to the total mass of the first product (Col 5, lines 32-39). Samain also discloses the viscosity of the first base product is between 4 Pa·s and 10 Pa·s (4,000-10,000 cps/cSt) (Col 5, lines 44-46).
Samain does not disclose the first silicone compound and the second silicone compound are each included in an amount of 1 to 40 parts by weight with respect to the weight of the first agent or the catalyst is included in an amount of 0.001 to 0.06 parts by weight with respect to the weight of the second agent, as recited in claim 9, or that the second agent has a viscosity of 10,000 to 2,000,000 cps/cSt, as recited in claim 11.
Yu teaches a cosmetic formulation comprising a first reactive reinforcing component and a second crosslinking component [0013]. The reactive component includes at least one polysiloxane (such as vinyl dimethicone from the Andisil VS series and hydrogen dimethicone from the Andisil XL series [0252]) and is present in an amount from 30 to 60 wt.% of the reactive reinforcing component [0043] [0126] [0352]. The crosslinking component has viscosity from 1,000 to 50,000 cSt (or cP) [0133] and catalyzes cross linking of the reactive reinforcing component [0013] when the catalyst (such as a platinum catalyst [0131]) comprises between about 0.005 and about 0.04 wt.% of the crosslinking component [0135]. Yu teaches that the compositions are durable, natural looking, and work to correct body imperfections such as to reduce the appearance of wrinkles [0005] [0013] [0032].
Since Samain generally teaches a cosmetic composition with polysiloxanes and a platinum catalyst for the treatment of wrinkles, it would have been prima facie obvious to one of ordinary skill in the art to formulate the composition of Samain containing the catalyst to have a viscosity from 1,000 to 50,000 cSt/cP and between 0.005 and 0.04 wt.% of the catalyst, because Yu teaches that a composition with this viscosity and amount of catalyst is effective at crosslinking the reactive component (e.g., siloxanes). It also would have been prima facie obvious to one of ordinary skill in the art to include each of the silicone compounds in an amount from 30 to 60 wt.% within the first composition of Samain, because Yu teaches this amount of siloxanes within a cosmetic composition to treat wrinkles. An ordinarily skilled artisan would be motivated to follow the teachings of Yu (e.g., viscosity and amount of components) in order to have a product that is durable, natural looking, and corrects body imperfections such as reducing the appearance of wrinkles [0005] [0013] [0032]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Response to Arguments/Analysis of Unexpected Results
Applicant's arguments filed 11/06/2025 have been fully considered but they are not persuasive.
Applicant argues that because of the addition of cerium oxide in Examples 1-6, the mechanical properties of the formulation were significantly increased, a noticeable clouding phenomenon was not exhibited, and viscosity was easily controlled and that these results are unexpected over the prior art.
The Examiner has fully reviewed and considered the unexpected results alleged by the applicant at pg. 28-33 of the as-filed specification. As shown in Figures 2-5, the breaking stress/strain with 1 wt.% Ceratect NF-SA (cerium oxide surface modified with stearic acid) (Example 1) is higher than when an inorganic filler was not added (Comparative Examples 1 and 5-6) and when other inorganic fillers are used (1 wt.% SIO1-4 ZnO-350, Comparative Example 2; 1 wt.% MT-700Z, Comparative Example 3; Aerosil R812S, Comparative Example 4). There do not appear to be significant improvements in the breaking stress/strain when the cerium oxide is not surface modified with stearic acid (Example 6, Figures 3 and 5). In regards to the degree of cloudiness, when comparing the formulations with the same amount of inorganic filler (Example 1 vs. Comparative Examples 2, 3, and 4), Ceratect NF-SA shows an improvement in cloudiness over MT-700Z, but not over SIO1-4 ZnO-350 or Aerosil R812S (Table 5). Ceratect NF-SA does not show a significant increase in the viscosity of the composition (Figure 6).
Overall, the results demonstrate that cerium oxide surface modified with stearic acid in combination with vinyl dimethicone and hydrogen dimethicone shows an increase in mechanical strength while demonstrating less cloudiness in comparison to the inorganic filler MT-700Z (TiO2) and does not cause a significant increase in the viscosity of the composition.
These results are unexpected over the prior art.
However, the claims are not “commensurate in scope” with the showing. See MPEP § 716.02(d). The Applicant has demonstrated improved mechanical strength, but this has only been shown with a specific amount of cerium oxide surface modified with stearic acid in combination with vinyl dimethicone and hydrogen dimethicone. It is unclear that a comparative composition containing these specific components and in these specific percentages would be reasonably representative of compositions containing other silicone compounds, (i.e., other than vinyl dimethicone and hydrogen dimethicone), other surface modifications of cerium oxide (i.e., other than stearic acid) and in differing amounts, falling within the broader scope currently claimed. Claim 13 would be commensurate in scope with the showing if the specific surface modification of cerium oxide were defined (the cerium oxide is cerium oxide surface-modified with stearic acid) and the first silicone compound and second silicone compound were defined as vinyl dimethicone and hydrogen dimethicone.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612