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 .
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.
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) 15, 16, 19, 20, 23, 24, 27, and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bortnick et al. (US Patent No. 4962165), as applied to claim 13, as evidenced by Watanabe (US Serial No. 2019/0040170).
Regarding claims 13-14; Bortnick et al. teaches a method for producing a surface modified silicone-containing particles with reactive surfactant comprising mixing 90g methacrylate-functional siloxane (100 parts), 5g allyl methacrylate, 5g reactive surfactant (5.55 parts), 0.5g radical initiator (0.55 parts), 0.9g surfactant, and 30g water (33.3 parts) to achieve an emulsion having a particle size in the submicron to 15 micron range; poured into a kettle containing hot water (200 g) to effect a suspension polymerization to achieve a hydrophilic silicone particle having a particle size distribution similar to that of the monomer emulsion (i.e. submicron to 15 micron range) [Ex5]. The total amount of water in the method disclosed by Bortnick is 255.55 parts by mass based on 100 parts of the siloxane compound (as calculated by examiner based on 230g water).
While Bortnick et al. teaches a monofunctional methacrylate functional siloxane in the preferred embodiment, Bortnick et al. contemplates a larger genus of (meth)acrylate functional siloxanes (Formula II) suitable for use in the present invention (nonionic) [col6, line30-53].
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(II)
Wherein R1 and R2 may independently be alkyl or aryl, or methacryloxypropyl; thus the organosiloxane polymer, as taught by Bortnick et al., has radical polymerization reactive groups at least at both terminals.
The Examiner makes note that “the volume average particle size is measured by a light scattering method… the volume average particle size is measured by an electric resistance method” are merely product by process limitations. The examiner notes that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) ); see MPEP §2113.
Bortnick et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Bortnick et al. does not specifically disclose an embodiment containing an organopolysiloxanes having a radical polymerization reactive group at least at both terminals. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a hydrophilic silicone particle containing an organopolysiloxanes having a radical polymerization reactive group at least at both terminals, based on the invention of Bortnick et al., and would have been motivated to do so since Bortnick et al. suggests that the method for producing particles can contain an organopolysiloxanes having a radical polymerization reactive group at least at both terminals (formula II) [col6, line30-54]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claims 17-18, 21-22, and 25-26; Bortnick et al. teaches the methacrylate-functional siloxane having the following formula:
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wherein R1 and R2 may independently be alkyl or aryl, or methacryloxypropyl [col6, line30-54].
Claim(s) 15, 16, 19, 20, 23, 24, 27, and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bortnick et al. (US Patent No. 4962165), as applied to claim 13, as evidenced by Watanabe (US Serial No. 2019/0040170).
Bortnick et al. teaches the claimed hydrophilic silicone particle, as set forth above, with respect to claim 13.
Regarding claims 15, 16, 19, 20, 23, 24, 27, and 28; Bortnick et al. teaches suitable reactive surfactants include nonylphenoxy-poly(ethyleneoxy)ethyl acrylate, methoxypoly(ethyleneoxy)ethyl acrylate, and stearyloxypoly(ethyleneoxy)ethyl methacrylate of about 10 to 40 (ethyleneoxy) chain lengths, however does not explicitly disclose the cloud point of said surfactants. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. According to the original specification, suitable surfactants (having the desired cloud point) used in the invention include commercially available products such as Aqualon HS series surfactants, which as a nonylpropenylphenol-ethylene oxide (10 moles) based surfactant. Therefore, the claimed effects and physical properties, i.e. cloud point, would necessarily be present in a surfactant of substantially similar structure. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I & II.
Watanabe provides evidence that Aqualon HS-10 (HS series surfactant) has a nonylpropenylphenol-ethylene oxide based structure [0059].
Response to Arguments
Applicant's arguments filed 20 June 2025 have been fully considered but they are not persuasive.
Applicants argue Bortnick fails to describe or suggest the presently claimed method for producing the hydrophilic silicone particle, because Bortnick fails to describe or suggest use of a component (A) that is “organopolysiloxanes having a radical polymerization reaction group at least at both terminals” and use of a water component (D) in an amount of 50-500 parts by mass with respect to 100 parts by mass of (A) component.
The Examiner respectfully disagrees. As stated in the rejection above, Bortnick teaches a genus of organopolysiloxanes which may include methacryloxypropyl functionalization at the terminal ends. In addition, the preferred embodiment (Ex5 of Bortnick) teaches a total amount of water to be 230g, thus equating to 255.55 parts by mass based on 100 parts of the siloxane compound 255.55 parts by mass based on 100 parts of the siloxane compound (see rejection above).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., rubber hardness as dependent on the number of (meth)acrylic groups and D unit dimethylsiloxy groups) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that the presently claimed method provides for a silicone particle that may be readily dispersed in an aqueous material without the additional use of a dispersant, 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).
As such Bortnick et al. still renders obvious the basic claimed method for producing a hydrophilic silicone particles, as required by the instant claim language.
Conclusion
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767