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 .
In view of applicant’s amendment, previous 103 rejection over Kamei et al (JP2018-2643) is hereby withdrawn. Kamei does not teach or suggest instant silicone resin having Mw range of 25,000–100,000. Thus, applicant’s argument with respect to the previous 103 rejection is now moot.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 12 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Cook et al (US 2007/0148115 A1) or Cook et al (US 2007/0148115 A1) in view of Suenaga et al (US 2011/0040062 A1).
Cook teaches ([0013]-[0023]) a MQ-T propyl siloxane resin comprising the following units:
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in which a = 0.05-0.5, b = 0-0.3, c = a value greater than zero, d = 0.05-0.6, and a+b+c+d = 1; and R1, R2 and R3 are independently an alkyl group of 1-8 carbon atoms, an aryl group, a carbinol group or an amino group, with the provision that greater than 40 mole% of the R3 group in the siloxane resin are propyl.
Based on Cook’s teaching, it would have been obvious to one skilled in the art to have R1-R3 to be alkyl groups of 1-8 carbon atoms, with greater than 40 mole% of the R3 group being propyl. Thus, Cook teaches instant R1-R3 groups (alkyl groups having 1-8 carbon atoms. Cook’s ranges for the values of a, b, c and d (0.05-0.5, 0-0.3, greater than zero, and 0.05-0.6, respectively) overlap with corresponding instant ranges for the values of a, b, c and d (0.2-0.5, 0.0-0.1, 0.2-0.6 and 0.2-0.5, respectively), thus rendering instant ranges for the values of a, b, c and d prima facie obvious. In the case “where the [claimed] ranges overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness would exist which may be overcome by a showing of unexpected results, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). Assuming that c (a value greater than zero) is set to be a range of 0.05-0.65 (according to Cook’s teaching in [0035]), Cook’s a/(c+d) value would range from 0.04 to 5, and Cook’s c/d value would range from 0.083 to 13, as calculated by the Examiner. Such ranges for a/(c+d) and c/d in Cook overlap with instant ranges for a/(c+d) (0.3-0.9) and c/d (0.4-3.0), thus rendering instant ranges for a/(c+d) and c/d prima facie obvious. In re Wertheim, supra.
As to instant weight-average molecular weight (Mw) range 25000 – 100000, although Cook gives a general teaching ([0046]) that its inventive MQ-T propyl siloxane resins typically have the number average molecular weight (Mn) that ranges from 3,000 to 10,000, the reference does not give a general teaching as to a Mw range for its inventive MQ-T propyl siloxane resins. However, in its working example (see Table 4 in [0099], Cook’s inventive siloxane resins (1-a) – (3-b) (all of which meet the general description of its MQ-T propyl siloxane resin shown in [0013]-[0023]) are shown to have weight-average molecular weights (Mw) that range from 26900 to 25300000, and such range overlaps with instant Mw range of 25000 – 100000, thus rendering instant Mw range prima facie obvious. In re Wertheim, supra. Alternatively, Suenaga et al teaches ([0016]) that by using a silicone resin having a weight-average molecular weight (Mw) in a range from 5000 to 500,000 in a cosmetic product, a soft and well spreadable coat with no icky feeling can be obtained at room temperature. Thus, it would be obvious to one skilled in the art to make Cook’s MQ-T propyl siloxane resin to have a Mw range of 5000 – 500,000 with a reasonable expectation of obtaining a soft and well spreadable coat with no icky feeling at room temperature as taught by Suenaga. Such Mw range overlaps with instant Mw range 25000-100000, thus rendering instant Mw range prima facie obvious. In re Wertheim, supra.
Cook teaches (claim 6) a cosmetic product containing its inventive siloxane resin and further teaches ([0002] and [0091]) that the siloxane resins of its invention are particularly useful as a resin additive in pigmented cosmetic formulations (instant make-up cosmetic of claim 29) as its MQ-T propyl siloxane resins provide glossy, non-tacky films that can be used to enhance the substantivity of color cosmetic formulations.
Thus, Cook or Cook in view of Suenaga renders obvious instant claims 12 and 29.
Claim(s) 13-29 are rejected under 35 U.S.C. 103 as being unpatentable over Cook et al (US 2007/0148115 A1) or Cook et al (US 2007/0148115 A1) in view of Suenaga et al (US 2011/0040062 A1), as applied to claim 12 above, and further in view of Kamei et al (JP2018-2643 and its English translation).
With respect to instant claim 13, Cook does not explicitly teach the amount of its MQ-T propyl siloxane resin to be used in cosmetic formulations. However, Kamei, which teaches ([0001] and [0007]) a similar silicone resin that is used in a cosmetic preparation, teaches (see [0011]) that such silicone resin can be used in the amount of 0.1-40 mass% based on the total mass of the cosmetic. It would have been obvious to one skilled in the art to use Cook’s MQ-T propyl siloxane resin in a cosmetic product in the amount of 0.1-40 mass% with a reasonable expectation of success. Thus, Cook or Cook in view of Suenaga, and further in view of Kamei renders obvious instant claim 13.
With respect to instant claims 14-15, Cook does not explicitly teach the use of instant oil agent. Kamei teaches ([0044], [0046], [0048]) that since its silicone resin (which is similar to Cook’s MQ-T propyl siloxane resin) is usually a solid, it is preferable to prepare a solution by diluting it with an oil, such as isododecane. It would be obvious to one skilled in the art to use isododecane (instant hydrocarbon oil of claims 14-15) to dilute Cook’s MQ-T propyl siloxane resin according to Kamei’s teaching with a reasonable expectation of success. Thus, Cook or Cook in view of Suenaga, and further in view of Kamei renders obvious instant claims 14-15.
With respect to instant claims 16-23, Cook does not explicitly teach the use of a surfactant. However, as evidenced by Kamei ([0013]-0014]), it is well known in the art to use a surfactant in a cosmetic composition so as to obtain an emulsion easily. It would have been obvious to one skilled in the art to further contain a surfactant in Cook’s cosmetic product with a reasonable expectation of success in obtaining an emulsion easily. Kamei further teaches ([0015]) that such surfactant is preferably a linear or branched organopolysiloxane in which the hydrophilic group is polyoxyalkylene or polyglycerin or an alkyl-co-modified organopolysiloxane. It would have been obvious to one skilled in the art to use such surfactant(s) in Cook’s cosmetic product with a reasonable expectation of easily obtaining an emulsion. Thus, Cook or Cook in view of Suenaga, and further in view of Kamei renders obvious instant claims 16-23.
With respect to instant claims 24 and 25, the Examiner established above that it would be obvious to use isododecane (a liquid hydrocarbon oil) to dilute Cook’s MQ-T propyl siloxane resin according to Kamei’s teaching. Kamei further teaches ([0076]) that it is also preferable to use a crosslinked organopolysiloxane polymer having a polyether group and/or a polyglycerin group with a liquid hydrocarbon oils (such as isododecane) so as to absorb an amount of the liquid oil that is greater than or equal to their own weight. Based on Kamei’s teaching, it would be obvious to one skilled in the art to further include a crosslinked organopolysiloxane polymer having a polyether group and/or a polyglycerin group (together with the liquid hydrocarbon oil, isododecane) in Cook’s cosmetic product with a reasonable expectation of success. Thus, Cook or Cook in view of Suenaga, and further in view of Kamei renders obvious instant claims 24 and 25.
With respect to instant claim 26, Cook does not explicitly teach the use of instant silicone film former. Kamei teaches ([0021]-[0022]) that its cosmetic composition containing the silicone resin (which is similar to Cook’s MQ-T propyl siloxane resin) preferably further contains a silicone film-forming agent selected from the group consisting of a silicone resin composed of components selected from R3SiO1/2, R2SiO2/2, RSiO3/2 and SiO4/2, in which R is the same as the R1, a linear acrylic-silicone graft copolymer and a linear acrylic-silicone block copolymer. Kamei teaches that by including such silicone film-forming agent, the film-forming ability of the cosmetic can be further improved. Thus, it would be obvious to one skilled in the art to further include instant silicone film former of claim 26 in Cook’s cosmetic product in order to improve the film-forming ability of the cosmetic product. Thus, Cook or Cook in view of Suenaga, and further in view of Kamei renders obvious instant claim 26.
With respect to instant claim 27, although Cook does not explicitly teach the use of powder in its cosmetic product, as evidenced by Kamei ([0057]), it is well known in the art that a cosmetic composition typically contains one or more types of powder depending on the purpose. Since Cook teaches ([0002] and [0091]) that the siloxane resins of its invention are particularly useful in pigmented cosmetic formulations, it would be obvious to one skilled in the art to add inorganic pigment powders in Cook’s pigmented cosmetic formulations with a reasonable expectation of success. Thus, Cook or Cook in view of Suenaga, and further in view of Kamei renders obvious instant claim 27.
With respect to instant claim 28, although Cook does not explicitly teach the use of instant ultraviolet light absorbing component, as evidenced by Kamei ([0025]-[0026]), it is well known in the art to include an ultraviolet absorbing component in a cosmetic composition in order to effectively absorb ultraviolet rays. It would have been obvious to one skilled in the art to further include an UV absorbing compound in Cook’s cosmetic product so as to effectively absorb harmful UV rays. Thus, Cook or Cook in view of Suenaga, and further in view of Kamei renders obvious instant claim 28.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIN J. LEE whose telephone number is (571)272-1333. The examiner can normally be reached on M-F 9 am-5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached on 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIN J LEE/
Primary Examiner, Art Unit 1613
February 21, 2026
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