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
The amendments and arguments filed on 4/22/2025 and 5/29/2025 are acknowledged and have been fully considered. In the claim set filed 4/22/2025, Applicant amended claim 1. In the claim set filed 5/29/2025, no new amendments were filed; Claims 2 and 6-10 are canceled; no claims are withdrawn; no claims are new.
Claims 1 and 3-5 will be examined on the merits herein.
Objections/Rejections Withdrawn
Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn.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, and constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 4 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayakawa et al. (US 2011/0301247).
Regarding claims 1 and 2, Hayakawa et al. discloses a cosmetic product with a polymer containing a repeating unit (see abstract). Hayakawa et al. discloses tris(trimethylsiloxy)silylnorbornene (Monomer A), with the following structure:
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(see [0101]). Hayakawa et al. discloses copolymers of tris(trimethylsiloxy)silylnorbornene-co-norbornene (Polymer 1-1), which is composed of Monomer A (i.e. component (A), see [0102]-[0105]). Hayakawa et al. discloses solutions of Polymer 1-1 in isododecane and methyltrimethicone (i.e. component (B), see [0112] and [0113]). Hayakawa et al. discloses that the composition can include an inorganic powder selected from include silica, barium sulfate, hydroxyapatite, zeolite, mica, and calcium sulfate (i.e. component (C) comprising component (C-1), see [0059]). Hayakawa et al. specifically discloses a mascara formulation with 26.5% of 30 wt % solution Polymer (I-1) in isododecane, 34% isododecane, 3% silica, and 12% talc (see Example 9, [0173]). The composition thus has 7.95% of Polymer (I-1), and 52.55% by mass of isododecane and either 3% or 12% by mass of an inorganic powder, with a mass ratio of A/B of 0.15. It is noted that the claim only requires the mass of “an inorganic powder that meets the claimed refractive index, not the total mass of all inorganic powders.
Regarding claim 4, Hayakawa et al. specifically discloses 3% or 12% by mass of an inorganic powder (see Example 9, [0173]).
Regarding claim 5, Hayakawa et al. discloses 3% or 12% by mass of an inorganic powder (see Example 9, [0173]), 3% by mass of silica reads on a 2.65 ratio.
Response to Arguments
Applicant's arguments filed 4/22/2025 and 5/29/2025 have been fully considered but they are not persuasive in view of the modified grounds of rejections set forth above as necessitated by amendment.
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, 3, 4 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of copending Application No. 17/789286 in view of Hayakawa et al. (US 2011/0301247).
Copending Application No. 17/789286 is drawn to a composition for external preparation for skin comprising from 1 to 20 mass% of a norbornene/tris(trimethylsiloxy)silylnorbornene copolymer, (B) from 30 to 98 mass% of 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, where the mass ratio of (A)/(B) is from 0.02 to 0.25 (see claims 1, 11-14).
Copending Application No. 17/789286 does not teach a powder comprising (C-1) an inorganic powder having a refractive index of from 1.3 to 1.8 at 0.1 to 30 mass% relative to a total mass of the composition or the claimed ratio of (A)/(C-1).
The teachings of Hayakawa et al. have been set forth above.
It would have been obvious to a person of ordinary skill to combine the teachings of Copending Application No. 17/789286 and Hayakawa et al. to add an inorganic powder having a refractive index of from 1.3 to 1.8 at 0.1 to 30 mass% in the claimed ratio of (A)/(C-1) as taught by Hayakawa et al. One would be motivated to do so with a reasonable expectation of success as both are drawn to compositions for external preparation for skin, and Hayakawa et al. teaches that inorganic powder having a refractive index of from 1.3 to 1.8 at 0.1 to 30 mass% in the claimed ratio of (A)/(C-1) can be successfully utilized in skin compositions.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3, 4 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/ 995277 in view of Hayakawa et al. (US 2011/0301247).
Copending Application No. 17/995277 is drawn to a composition for external preparation for skin comprising from 1 to 30 mass% of a norbornene/tris(trimethylsiloxy)silylnorbornene) copolymer.
Copending Application No. 17/995277 does not teach component (B) or component (C-1) or the claimed amounts/ratios.
The teachings of Hayakawa et al. have been set forth above.
It would have been obvious to a person of ordinary skill to combine the teachings of Copending Application No. 17/995277 and Hayakawa et al to arrive at the instant composition. One would be motivated to do so with a reasonable expectation of success as both are drawn to external preparation for skin comprising from 1 to 30 mass% of a norbornene/tris(trimethylsiloxy)silylnorbornene) copolymers, and Hayakawa et al. teaches components (B) and (C-1) can be successfully utilized in skin compositions in the claimed amounts/ratios.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3, 4 and 5 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. 17/995270 in view of Hayakawa et al. (US 2011/0301247).
Copending Application No. 17/995270 is drawn to a cosmetic kit comprising a norbornene/tris(trimethylsiloxy)silylnorbornene) copolymer and 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.
Copending Application No. 17/995270 does not teach a powder comprising (C-1) an inorganic powder having a refractive index of from 1.3 to 1.8 at 0.1 to 30 mass% relative to a total mass of the composition or the claimed ratio of (A)/(C-1).
The teachings of Hayakawa et al. have been set forth above.
It would have been obvious to a person of ordinary skill to combine the teachings of Copending Application No. 17/789286 and Hayakawa et al. to add an inorganic powder having a refractive index of from 1.3 to 1.8 at 0.1 to 30 mass% in the claimed ratio of (A)/(C-1) as taught by Hayakawa et al. One would be motivated to do so with a reasonable expectation of success as both are drawn to compositions for external preparation for skin, and Hayakawa et al. teaches that inorganic powder having a refractive index of from 1.3 to 1.8 at 0.1 to 30 mass% in the claimed ratio of (A)/(C-1) can be successfully utilized in skin compositions.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 3, 4 and 5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/995265in view of Hayakawa et al. (US 2011/0301247).
Copending Application No. 17/995265 is drawn to a composition for external preparation for skin comprising 4 to 18 mass% of norbornene/tris(trimethylsiloxy)silylnorbornene copolymer and from 30 to 95 mass% of one or more members selected from the group consisting of isododecane, hexamethyldisiloxane, methyl trimethicone, and polydimethylsiloxane having a kinematic viscosity of 2 cSt or less at 25°C.
Copending Application No. 17/995265 does not teach a powder comprising (C-1) an inorganic powder having a refractive index of from 1.3 to 1.8 at 0.1 to 30 mass% relative to a total mass of the composition or the claimed ratio of (A)/(C-1).
The teachings of Hayakawa et al. have been set forth above.
It would have been obvious to a person of ordinary skill to combine the teachings of Copending Application No. 17/995265 and Hayakawa et al. to add an inorganic powder having a refractive index of from 1.3 to 1.8 at 0.1 to 30 mass% in the claimed ratio of (A)/(C-1) as taught by Hayakawa et al. One would be motivated to do so with a reasonable expectation of success as both are drawn to compositions for external preparation for skin, and Hayakawa et al. teaches that inorganic powder having a refractive index of from 1.3 to 1.8 at 0.1 to 30 mass% in the claimed ratio of (A)/(C-1) can be successfully utilized in skin compositions.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant has requested that the provisional rejections be held in abeyance until patentable subject matter is identified. The request to hold the rejection in abeyance has been noted and as no arguments regarding the merits of the rejection have been submitted, the rejection is maintained for reasons of record.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA L FISHER whose telephone number is (571)270-7430. The examiner can normally be reached Monday-Friday 9am-5pm (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Sullivan can be reached at 571-272-0900. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Melissa L Fisher/ Supervisory Patent Examiner, Art Unit 1658