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 .
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.
Claims 8-11 and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Nakanishi et al., U.S. Patet # 6,576,623.
Nakanishi teaches a polyorganosiloxane-polyoxyalkylene polymer, the structure of which mirrors that which is claimed in virtually every respect. See the description at column 2, line 32 through column 3, line 4. Moreover, many of the exemplifications of the prior art compound conform with the limitation outlined by expression (II) insofar as the pendant oligoether chains are devoid of oxypropylene units. As for expression (I), which seems entirely unique to the instant Specification (though the Examiner recognized that the subject matter disclosed in { } brackets simply connotes a weight ratio and, hence, multiplying the quotient described in said brackets by 100 would define the overall weight contribution of the oxyethylene units relative to the full weight of the polymer… a much more commonly reported aspect), it is recognized that none of the exemplifications satisfy expression (I). Indeed, the magnitude of the ratio set forth in expression (I), multiplied by 20 gives values of 4.5, 12.14, and 4.74 in association with the polymers obtained in Examples 1, 2, and 3 respectively. None of the remaining Examples disclosed copolymers complying with the limitation of expression (I) either and at least a couple did not anticipate expression (II) either insofar as the oligoether chains grafted to the siloxane backbone were either comprised entirely of propylene oxide units, or the mass of the propylene oxide units was greater than that of the ethylene oxide units.
On the other hand, description at column 2, line 32 through column 3, line 4 is encompassing of much more than those ten permutations as the magnitude of the variables a-h and the ratios of dimethylsiloxane-to-oligoether-bearing/oligosiloxane-bearing repeat units are altered. Within the full breadth of this description are many permutations that would conform with the requirements of Expression (I).
The prior art copolymers have application in various personal care compositions including different types of cosmetic compositions. A cosmetic composition may be thought of as a coating/paint for the skin. As for the concept that the composition is “water-based”, there are exemplifications of the personal care compositions to which the siloxane-oxyalkylene copolymer is added that are primarily comprised of water such as the suntan cream/lotion summarized in Example 13. Yet other examples, like the composition of Example 12, contain both water and butylene glycol.
Allowable Subject Matter
Claims 12-21 and 24-27 are 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.
To reiterate, it is only contemplated that the prior art copolymers be used in personal care formulations hence it would be unobvious to incorporate any of the polymers disclosed in claims 12-15. As for claims 16 and 17, while it is appreciated that they essentially recite merely an intended use of the paint of claim 10, which is deemed to be unpatentable, it remains the case that the prior art composition be capable of serving in the stated capacity. Obviously, it is not the copolymer alone that bestows this property and there is nothing to suggest to a skilled practitioner of the prior art invention that it would be useable in this manner.
As an aside, the Examiner is cognizant of data provided in the Specification intended to illustrate the importance of expression (I) of claim 1 being satisfied in order that various properties of a coating according to the Specification would simultaneously exhibits good compatibility, defoaming characteristics, etc. but the showing is hardly commensurate in scope with the breadth of the claims. Offered as merely one shortcoming is the fact that the only acrylic-based coatings were tested whereas claims 12 and 13 identify a number of other polymer candidates and claims 10 and 11 are essentially unlimited. Further, the Examiner would argue that any unexpected results would only have to be considered in the context of the coatings containing the copolymer since it is coatings comprising the compound, and not the compound by itself, that are evaluated. That is to say, even had Applicant outlined a representative sampling of the compositions, at least claims 8 and 9 would remain unpatentable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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August 4, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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