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 .
Status of Claims
Receipt of Applicant’s response, dated 03/10/2025, is acknowledged.
Claims 1, 6, and 11-22 are pending.
Claim 1 is amended.
Claims 11-22 are new.
Claims 2-5 and 7-10 are canceled.
Claims 1, 6, and 11-22 are under consideration in the instant Office action.
Information Disclosure Statement
The information disclosure statement (IDS) filed 03/03/2025 has been considered by the Examiner. A signed copy of the IDS is included with the present Office Action.
Rejections Withdrawn
Claim Rejections - 35 USC § 112(b)
The indefiniteness rejection of claims 1-9 set forth in the Office action dated 12/10/2024 is hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 112(d)
The rejection of claims 3 and 6 set forth in the Office action dated 12/10/2024 is hereby withdrawn in light of Applicant’s amendments to the claims.
Claim Rejections - 35 USC § 103
The obviousness rejection of claims 1-6 over Tamura et al. and the obviousness rejection of claims 7-9 over Tamura et al. in view of Hayakawa et al. set forth in the Office action dated 12/10/2024 are hereby withdrawn in light of Applicant’s amendments to the claims and in favor of the new ground of rejection set forth below as necessitated by Applicant’s amendment.
Double Patenting
The obviousness-type double patenting provisional rejections over 17/995,270, 17/995,277, 17/995,265, 17/995,276, 17/280,488 and 17/789,363 set forth in the Office action dated 12/10/2024 have been withdrawn in light of Applicant’s amendments to the claims and in favor of the new grounds of rejection below as necessitated by Applicant’s amendment.
New Grounds of Rejection
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.
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, 6, 11, and 13-22 are rejected under 35 U.S.C. 103 as being unpatentable over Hayakawa et al. (US 2011/0301247 A1, published 12/08/2011, cited in IDS dated 06/27/2022) as evidenced by Spectrum Chemical MFG Corp (“Dimethylpolysiloxane, Technical”) and GSRS (“Methyl Trimethicone”).
Hayakawa et al. teach a cosmetic product that may be externally applied to the skin and may be in the form of a skin care product to hide wrinkles (e.g., Abstract, [0042], [0096], [0098]).
The cosmetic product comprises a film-forming polymer that has good compatibility with a variety of oils, especially silicone oil, and readily spreads on the skin and hair without sticky feeling (e.g., [0002]). The film-forming polymer may include tris(trimethylsiloxy)silylnorbornene-co-norbornene addition copolymer (e.g., [0101]). The film-forming polymer should preferably be used in an amount of 0.1 to 7.5 weight % in the total amount of liquid cosmetic products such as milky lotion (e.g., [0042]).
The cosmetic product may be incorporated with one or more than one kind of oil, which may be in the form of solid, semi-solid, or liquid so long as it is usable for ordinary cosmetic products (e.g., [0043]). Suitable oils include, for example, silicone oils, hydrocarbon oils, higher fatty acids, higher alcohol oils, ester oils, glyceride oils, animal and vegetable oils, semi-synthetic oils, and fluorine-derived oils (e.g., [0044]). Examples of silicone oils include straight-chain or branched-chain organopolysiloxanes ranging from low to high in viscosity such as dimethylpolysiloxane and tristrimethylsiloxymethylsilane (e.g., [0045]). A portion of the oil as should preferably be a silicone oil (volatile at room temperature 25 deg C) or isododecane (e.g., [0046]). Examples of the higher alcohol oils include monostearyl glycerine ether and monooleyl glyceryl ether (i.e., ether oils) (e.g., [0049]). Examples of the animal and vegetable oils include kapok wax and candelilla wax (i.e., solid waxes) (e.g., [0052]). The one or more kind of oil should be present in an amount of 1 to 98% in the total amount of the cosmetic product (e.g., [0054]). The mass ratio of the silicone oil volatile at room temperature 25 deg C to the film-forming polymer should be from 1:2 to 100:1 (e.g., [0054]).
The cosmetic product of Hayakawa et al. for external application to the skin comprising tris(trimethylsiloxy)silylnorbornene-co-norbornene addition copolymer as the film-forming polymer from 0.1-7.5 wt% and two kinds of oils, wherein a first oil is chosen from a silicone oil volatile at room temperature 25 deg C or isododecane (for which Hayakawa et al. teach that a portion of the oil should preferably be a silicone oil volatile at room temperature 25 deg C or isododecane) and a second oil is chosen from silicone oils, hydrocarbon oils, higher fatty acids, higher alcohol oils, ester oils, glyceride oils, animal and vegetable oils, semi-synthetic oils, and fluorine-derived oils, and wherein the two oils are present from 1-98 wt% and wt% is based on the total weight of the cosmetic product, renders obvious instant claims 1, 6, 11, and 13-22.
The cosmetic product of Hayakawa et al. comprising tris(trimethylsiloxy)silylnorbornene-co-norbornene addition copolymer as the film-forming polymer meets the limitation of instant claim 1 of a composition comprising a component (A) being a norbornene/tris(trimethylsiloxy)silylnorbornene copolymer.
The cosmetic product of Hayakawa et al. comprising a first oil chosen from a silicone oil volatile at room temperature 25 deg C or isododecane meets the limitation of instant claim 1 of a composition comprising a component (B) being one or more selected from the group consisting of isododecane, hexamethyldisiloxane, methyl trimethicone, and polydimethylsiloxane having kinematic viscosity of 2 cSt or less at 25°C. Low viscosity dimethylpolysiloxane of Hayakawa et al. is synonymous with low viscosity polydimethylsiloxane of the instant claims as evidenced by Spectrum Chemical MFG Corp (See Description) and renders obvious polydimethylsiloxane having a kinematic viscosity of 2 cSt or less at 25°C. Tristrimethylsiloxymethylsilane of Hayakawa et al. is synonymous with methyl trimethicone of the instant claims as evidenced by GSRS (See Names And Synonyms).
The cosmetic product of Hayakawa et al. comprising a second oil chosen from silicone oils, hydrocarbon oils, higher fatty acids, higher alcohol oils, ester oils, glyceride oils, animal and vegetable oils, semi-synthetic oils, and fluorine-derived oils meets the limitation of instant claim 1 of a composition comprising a component (C) one or more non-volatile oils selected from the group consisting of ester oils, hydrocarbon oils, ether oils, higher alcohols, silicone oils, and solid waxes.
The cosmetic product of Hayakawa et al. comprising tris(trimethylsiloxy)silylnorbornene-co-norbornene addition copolymer from 0.1-7.5 wt%, a mass ratio of the first oil to tris(trimethylsiloxy)silylnorbornene-co-norbornene addition copolymer from 1:2 to 100:1, and a total amount of oil from 1-98 wt%, where wt% is based on the total weight of the cosmetic product meets the limitations of instant claim 1 of a composition comprising component (A) from 1-20 mass%, component (B) from 30-98 mass%, component (C) from 0.1 to 20 mass%, a mass ratio of component (A) to component (C) from 1 to 150, and a mass ratio of component (A) to component (B) from 0.02 to 0.4.
For example, a cosmetic product of Hayakawa et al. containing tris(trimethylsiloxy)silylnorbornene-co-norbornene addition copolymer in 7.5 wt%, tristrimethylsiloxymethylsilane, and a hydrocarbon oil, wherein the weight ratio of tristrimethylsiloxymethylsilane to tris(trimethylsiloxy)silylnorbornene-co-norbornene addition copolymer is 12:1, corresponds to about 90 wt% of tristrimethylsiloxymethylsilane and 2.5 wt % of hydrocarbon oil. This cosmetic product of Hayakawa et al. has a weight ratio of tris(trimethylsiloxy)silylnorbornene-co-norbornene addition copolymer to tristrimethylsiloxymethylsilane of about 0.08 which meets the limitation of a composition comprising a mass ratio of component (A) to component (B) of from 0.02 to 0.4 (instant claim 1). This cosmetic product of Hayakawa et al. has a weight ratio of tris(trimethylsiloxy)silylnorbornene-co-norbornene addition copolymer to hydrocarbon oil of 3 which meets the limitation of a composition comprising a mass ratio of component (A) to component (C) of from 1 to 150 (instant claim 1), from 1 to 100 (instant claim 20), from 1.5 to 70 (instant claim 21), and from 2 to 40 (instant claim 22). A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)).
The cosmetic product of Hayakawa et al. comprising a first oil chosen from a silicone oil volatile at room temperature 25 deg C (including low viscosity dimethylpolysiloxane and tristrimethylsiloxymethylsilane) or isododecane renders obvious instant claims 11 and 13-14. The cosmetic product of Hayakawa et al. comprising a second oil chosen from silicone oils, hydrocarbon oils, higher fatty acids, higher alcohol oils, ester oils, glyceride oils, animal and vegetable oils, semi-synthetic oils, and fluorine-derived oils, wherein the higher alcohol oils include monostearyl glycerine ether and monooleyl glyceryl ether (i.e., ether oils) and the animal and vegetable oils include kapok wax and candelilla wax (i.e., solid waxes) render obvious instant claims 6 and 15-19.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hayakawa et al. (US 2011/0301247 A1, published 12/08/2011, cited in IDS dated 06/27/2022) as evidenced by Spectrum Chemical MFG Corp (“Dimethylpolysiloxane, Technical”) and GSRS (“Methyl Trimethicone”) as applied to claims 1, 6, 11, and 13-22, and further in view of Santhanam et al. (US 8,575,106 B2, published 11/05/2013).
The teachings of the cosmetic product of Hayakawa et al. have been discussed supra.
Although Hayakawa et al. exemplify octamethyltrisiloxane and decamethyltetrasiloxane as silicone oils volatile at room temperature 25 deg C suitable for use in the cosmetic product (e.g., [0046]), Hayakawa et al. do not specifically exemplify hexamethyldisiloxane as a suitable silicone oil.
This deficiency is made up for in the teaching of Santhanam et al.
Santhanam et al. teach cosmetic compositions with an oil phase comprising one or more volatile and/or non-volatile silicone oils, wherein volatile silicone oils include low molecular weight polydimethylsiloxane compounds exemplified as hexamethyldisiloxane, octamethyltrisiloxane, decamethyltetrasiloxane, and dodecamethylpentasiloxane (e.g., Col. 29 Lines 64-65, Col. 30 Lines 22-26).
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 use hexamethyldisiloxane as a silicone oil volatile at room temperature 25 deg C in the cosmetic product of Hayakawa et al. One of ordinary skill in the art would have been motivated to do so because Santhanam et al. teach hexamethyldisiloxane as a volatile silicone oil that is an alternative to octamethyltrisiloxane, decamethyltetrasiloxane, and dodecamethylpentasiloxane. There would have been a reasonable expectation of success because the cosmetic product of Hayakawa et al. is compatible with octamethyltrisiloxane and decamethyltetrasiloxane as a silicone oil volatile at room temperature 25 deg C. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)).
The modified cosmetic product of Hayakawa et al. comprising hexamethyldisiloxane as a silicone oil volatile at room temperature 25 deg C renders obvious instant claim 12.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 6, and 11-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 6-8, and 10-12 of copending Application No. 17/995,270 (hereafter Application ‘270) in view of Hayakawa et al. (US 2011/0301247 A1, published 12/08/2011, cited in IDS dated 06/27/2022).
This is a provisional nonstatutory double patenting rejection.
Claim 1 of ‘270 recites a method for makeup comprising: (A) applying to a skin a composition X comprising components (A1) and (A2) at a mass ratio of the component (A1) to the component (A2), (A1)/(A2), of from 0.02 to 18/76.8: wherein (A1) comprises a norbornene/tris(trimethylsiloxy)silylnorbornene) copolymer; and (A2) comprises one or more volatile oils selected from the group consisting of isodecane, hexamethyldisiloxane, methyl trimethicone, and polydimethylsiloxane having kinematic viscosity of 2 cSt or lower at 25°C; and (B) applying to the skin a composition Y comprising a component (B1), other than the composition X: wherein (B1) comprises one or more selected from the group consisting of polyols and liquid oils, wherein said composition Y is applied before or after applying said composition X. Claim 4 of ‘270 recites a content of the component (A1) in the composition X is from 0.01 to 30 mass%. Claim 6 of ‘270 recites a content of the component (A2) in the composition X is from 1 to 98 mass%. Claim 7 of ‘270 recites a content of the component (B1) in the composition Y is from 1 to 95 mass%. Claim 8 of ‘270 recites a cosmetic kit for use in applying to a skin, comprising: (A) a composition X comprising components (A1) and (A2) at a mass ratio of the component (A1) to the component (A2), (A1)/(A2), of from 0.02 to 18/76.8: wherein (A1) comprises a norbornene/tris(trimethylsiloxy)silylnorbornene) copolymer; and (A2) comprises one or more volatile oils selected from the group consisting of isodecane, hexamethyldisiloxane, methyl trimethicone, and polydimethylsiloxane having kinematic viscosity of 2 cSt or lower at 25°C; and (B) a composition Y comprising a component (B1), other than the composition X: wherein (B1) comprises one or more selected from the group consisting of polyols and liquid oils. Claim 10 of ‘270 recites a content of the component (A1) in the composition X is from 0.01 to 30 mass%. Claim 11 of ‘270 recites a content of the component (A2) in the composition X is from 1 to 98 mass%. Claim 12 of ‘270 recites a content of the component (B1) in the composition Y is from 1 to 95 mass%.
The claims of ‘270 do not teach the component (B1) being one or more selected from the group consisting of ester oils, hydrocarbon oils, ether oils, higher alcohols, silicone oils, and solid waxes nor do they teach a ratio of components (A1) and (B1). The claims of ‘270 do not teach combining compositions X and Y into a singular composition.
These deficiencies are made up for in the teaching of Hayakawa et al., which has been described supra. It would have been prima facie obvious to one of ordinary skill in the art to formulate the compositions X and Y together to make a singular composition and to include the oils in the amounts taught by Hayakawa et al. in order to produce a cosmetic product that comprises a film-forming polymer that readily spreads on the skin and hair without sticky feeling (supra) and arrive at instant claims 1, 6, and 11-22.
Claims 1, 6, and 11-22 are directed to an invention not patentably distinct from claims 1, 4, 6-8, and 10-12 of commonly assigned copending Application No. 17/995,270. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned copending Application No. 17/995,270, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1, 6, and 11-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8-9 of copending Application No. 17/995,276 (hereafter Application ‘276) in view of Hayakawa et al. (US 2011/0301247 A1, published 12/08/2011, cited in IDS dated 06/27/2022).
This is a provisional nonstatutory double patenting rejection.
Claim 1 of ‘276 recites a method comprising: (A) applying to skin a composition X comprising components (A1) and (A2): wherein (A1) comprises a polymer comprising a norbornane structure and/or a silicone-modified Pullulan; and (A2) comprises a volatile oil; and (B) applying to the skin a composition Y comprising a component (B1), other than the composition X: wherein (B1) comprises one or more powders. Claim 2-3 recite the component (A1) is a silicone-modified polynorbornene of a formula (6), wherein formula (6) corresponds to a norbornene/tris(trimethylsiloxy)silylnorbornene copolymer of the instant claims. Claim 4 of ‘276 recites a content of the component (A1) in the composition X is from 0.01 to 30 mass %. Claim 5 of ‘276 the component (A2) in the composition X is one or more selected from the group consisting of volatile silicone oils and volatile hydrocarbon oils. Claim 6 of ‘276 recites a content of the component (A2) in the composition X is from 1 to 98 mass %. Claim 8 of ‘276 recites a cosmetic kit to be applied to skin, comprising: (A) a composition X comprising components (A1) and (A2): wherein (A1) comprises a polymer comprising a norbornane structure and/or a silicone-modified Pullulan; and (A2) comprises a volatile oil; and (B) a composition Y comprising a component (B1), other than the composition X: wherein (B1) comprises one or more powders. Claim 9 of ‘276 recites the component (A2) in the composition X is one or more selected from the group consisting of isodecane, hexamethyldisiloxane, methyl trimethicone, and dimethylpolysiloxane having a kinematic viscosity of 2 cSt or lower at 25° C.
The claims of ‘276 do not teach the inclusion of a non-volatile oil, an amount of non-volatile oil to be included, a ratio of component (A1) to non-volatile oil, or that the non-volatile oil component is one or more selected from the group consisting of ester oils, hydrocarbon oils, ether oils, higher alcohols, silicone oils, and solid waxes. The claims of ‘276 do not teach combining compositions X and Y into a singular composition.
These deficiencies are made up for in the teaching of Hayakawa et al., which has been described supra. It would have been prima facie obvious to one of ordinary skill in the art to formulate the compositions X and Y together to make a singular composition and to include the oils in the amounts taught by Hayakawa et al. in order to produce a cosmetic product that comprises a film-forming polymer that readily spreads on the skin and hair without sticky feeling (supra) and arrive at instant claims 1, 6, and 11-22.
Claims 1, 6, and 11-22 are directed to an invention not patentably distinct from claims 1-6 and 8-9 of commonly assigned copending Application No. 17/995,276. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned copending Application No. 17/995,276, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1, 6, and 11-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5, and 13 of copending Application No. 17/995,277 (hereafter Application ‘277) in view of Hayakawa et al. (US 2011/0301247 A1, published 12/08/2011, cited in IDS dated 06/27/2022).
This is a provisional nonstatutory double patenting rejection.
Claim 1 of ‘277 recites a composition for external preparation for skin comprising the following components (A), (B), and (C): (A) comprises from 1 to 30 mass% of a norbornene/tris(trimethylsiloxy)silylnorbornene) copolymer, (B) comprises a volatile oil having a volatilization rate of 14% or more after drying at 1 atmosphere, at 40°C, and an R.H. of 60% for 30 minutes, wherein the component (B) comprises one or more selected from the group consisting of isododecane, hexamethyldisiloxane, methyl trimethicone, and polydimethylsiloxane having kinematic viscosity of 2 cSt or less at 25°C, and (C) comprises a polyol, wherein a mass ratio of the component (A) to the component (C), (A)/(C), is from 3.3 to 92.9. Claim 2 of ‘277 recites a content of the component (B) is from 1 to 98 mass%. Claim 5 of ‘277 recites a mass ratio of the component (A) to the component (B), (A)/(B), is from 0.02 to 1. Claim 13 of ‘277 recites the composition further comprising a non-volatile oil.
The claims of ‘277 do not teach the amount of non-volatile oil, a ratio of component (A) to non-volatile oil, or that the non-volatile oil component is one or more selected from the group consisting of ester oils, hydrocarbon oils, ether oils, higher alcohols, silicone oils, and solid waxes.
These deficiencies are made up for in the teaching of Hayakawa et al., which has been described supra. It would have been prima facie obvious to one of ordinary skill in the art to include the oils in the amounts taught by Hayakawa et al. in order to produce a cosmetic product that comprises a film-forming polymer that readily spreads on the skin and hair without sticky feeling (supra) and arrive at instant claims 1, 6, and 11-22.
Claims 1, 6, and 11-22 are directed to an invention not patentably distinct from claims 1-2, 5, and 13 of commonly assigned copending Application No. 17/995,277. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned copending Application No. 17/995,277, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1, 6, and 11-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5-9, and 11-12 of copending Application No. 17/995,265 (hereafter Application ‘265) in view of Hayakawa et al. (US 2011/0301247 A1, published 12/08/2011, cited in IDS dated 06/27/2022).
This is a provisional nonstatutory double patenting rejection.
Claim 1 of ‘265 recites a composition comprising components (A) from 1 to 30 mass % of a polymer having a silicone moiety in which a ratio of deformation is 0.3 or higher and 1 or lower, and in a bend resistance test using a cylindrical mandrel method a minimum diameter of a cylindrical mandrel which causes no cracks in a polymer film is 2 mm or longer and 25 mm or shorter, (B) comprises a volatile oil having a volatilization rate of 14% or higher after drying at 1 atmosphere, at 40 °C., and an R.H. of 60% for 30 minutes, and (C) comprises a cation-modified clay mineral, wherein a mass ratio of the component (A) to the component (C), (A)/(C), is from 5 to 23. Claim 2 of ‘265 recites that content of the component (B) is from 1 to 98 mass%. Claim 5 of ‘265 recites that mass ratio of the component (A) to the component (B), (A)/(B), is from 0.02 to 1. Claim 6 of ‘265 recites the composition further comprising from 0.1 to 10 mass % of (E) a non-volatile oil. Claim 7 of ‘265 recites that component (A) is a silicone-modified polymer containing a norbornane moiety. Claims 8-9 of ‘265 recite that component (A) is a silicone-modified polynorbornene of a formula (6), wherein formula (6) corresponds to a norbornene/tris(trimethylsiloxy)silylnorbornene copolymer of the instant claims. Claim 11 of ‘265 recites that the component (B) is one or more selected from the group consisting of hydrocarbon oils and silicone oils. Claim 12 of ‘265 recites that the component (B) is one or more selected from the group consisting of isododecane, hexamethyldisiloxane, methyl trimethicone, and polydimethylsiloxane having a kinematic viscosity of 2 cSt or less at 25° C.
The claims of ‘265 do not teach the ratio of component (A) to non-volatile oil or that the non-volatile oil component is one or more selected from the group consisting of ester oils, hydrocarbon oils, ether oils, higher alcohols, silicone oils, and solid waxes.
These deficiencies are made up for in the teaching of Hayakawa et al., which has been described supra. It would have been prima facie obvious to one of ordinary skill in the art to include the oils in the amounts taught by Hayakawa et al. in order to produce a cosmetic product that comprises a film-forming polymer that readily spreads on the skin and hair without sticky feeling (supra) and arrive at instant claims 1, 6, and 11-22.
Claims 1, 6, and 11-22 are directed to an invention not patentably distinct from claims 1, 2, 5-9, and 11-12 of commonly assigned copending Application No. 17/995,265. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned copending Application No. 17/995,265, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1, 6, and 11-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8-9 of copending Application No. 17/789,363 (hereafter Application ‘363) in view of Hayakawa et al. (US 2011/0301247 A1, published 12/08/2011, cited in IDS dated 06/27/2022).
This is a provisional nonstatutory double patenting rejection.
Claim 1 of ‘363 recites a composition for external preparation for skin comprising the following components (A), (B), and (C): (A) a norbornene/tris(trimethylsiloxy)silylnorbornene copolymer, (B) one or more volatile oils selected from the group consisting of isododecane, hexamethyldisiloxane, methyl trimethicone, and polydimethylsiloxane having kinematic viscosity of 2 cSt or less at 25°C, and (C) a powder comprising (C-1) an inorganic powder having a refractive index of from 1.3 to 1.8, wherein a mass ratio of the component (A) to the component (C), (A)/(C), is from 1 to 50, wherein a content of the component (C-1) is from 0.1 to 30 mass% relative to a total mass of the composition, wherein a content of the component (A) is from 1 to 20 mass% and a content of the component (B) is from 30 to 98 mass%, each based on a total mass of the composition, and wherein a mass ratio of the component (A) to the component (B), (A)/(B), is from 0.02 to 0.4. Claims 8-9 recite that the component (A) is a silicone-modified polynorbornene including a norbornene/tris(trimethylsiloxy)silylnorbornene copolymer of the instant claims.
The claims of ‘363 do not teach the inclusion of a non-volatile oil, an amount of non-volatile oil to be included, a ratio of component (A) to non-volatile oil, or that the non-volatile oil component is one or more selected from the group consisting of ester oils, hydrocarbon oils, ether oils, higher alcohols, silicone oils, and solid waxes.
These deficiencies are made up for in the teaching of Hayakawa et al., which has been described supra. It would have been prima facie obvious to one of ordinary skill in the art to include the oils in the amounts taught by Hayakawa et al. in order to produce a cosmetic product that comprises a film-forming polymer that readily spreads on the skin and hair without sticky feeling (supra) and arrive at instant claims 1, 6, and 11-22.
Claims 1, 6, and 11-22 are directed to an invention not patentably distinct from claims 1 and 8-9 of commonly assigned copending Application No. 17/789,363. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411 ). Commonly assigned copending Application No. 17/789,363, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Response to Applicant’s Arguments
Applicant’s arguments filed on 03/10/2025 have been considered.
Applicant argues that neither Tamura et al. or Hayakawa et al. teach or suggest a mass ratio of the component (A) to the component (B), (A)/(B), is from 0.02 to 0.4.
The above argument has been fully considered by the Examiner but is not found persuasive because, as discussed in the new grounds of rejection above, Hayakawa et al. teach that the mass ratio of the volatile silicone oil (corresponding to component (B) of the instant claims) to the film-forming polymer (corresponding to component (A) of the instant claims) should be from 1:2 to 100:1. This corresponds to a mass ratio of the film-forming polymer (corresponding to component (A) of the instant claims) to the volatile silicone oil (corresponding to component (B) of the instant claims) of from 0.01 to 2, which overlaps the claimed ratio of component (A) to the component (B) being from 0.02 to 0.4. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art (In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)). For more detail, see the new grounds of rejection of claims 1, 6, 11, and 13-22 over Hayakawa et al. above. Note that the rejections over Tamura et al. have been withdrawn.
Applicant traverses the obviousness-type double patenting provisional rejections over 17/995,270, 17/995,277, 17/995,265, and 17/995,276 on the ground that the present application is entitled to an earlier US filing date than said copending applications. Applicant traverses the obviousness-type double patenting provisional rejections over 17/280,488 and 17/789,363 on the ground that there is no suggestion of the presently claimed compositions in said copending applications.
It is noted that the obviousness-type double patenting provisional rejections over 17/995,270, 17/995,277, 17/995,265, 17/995,276, 17/280,488 and 17/789,363 as set forth in the Office action dated 12/10/2024 have been withdrawn (see above). The new obviousness-type double patenting provisional rejections over 17/995,270, 17/995,277, 17/995,265, 17/995,276, and 17/789,363 are discussed above. While the instant application is the earlier filed application relative to the ‘270, ‘277, ‘265 and ‘276 applications, the obviousness-type double patenting provisional rejections are not the only rejections remaining, the instant claims are also rejected under USC 103 as being obviousness in view of the prior art and therefore the obviousness-type double patenting provisional rejections are maintained. Further, Applicant has not argued that the instant claims are patentably distinct or nonobvious, and no terminal disclaimer has been filed.
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.
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/K.E.O./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619