DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-4, and the species shown below in the reply filed on 4/16/2026 is acknowledged.
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The traversal is on the ground(s) that applicant alleges that there would not be an undue burden to consider all the claimed inventions. This is not found persuasive because applicant has not demonstrated that the position outlined in the previous Action stating that the claimed inventions lack unity of invention is improper. In the absence of such evidence, it is not persuasive to merely allege-with no supporting evidence and/or arguments-that there would not be an undue burden to search all of the claimed inventions.
The requirement is still deemed proper and is therefore made FINAL.
Claims 5-10 are therefore withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claim 1, 2, and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 17/923,448 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claim 1: Copending claim 1 recites an emulsifier which comprises a diblock copolymer (for claim 1) whose main chain comprises a silicone graft copolymer block represented by a formula (I) and a polar block represented by formula (II), wherein one terminus is represented by formula (III) and the other by formula (IV). Note that formula (I), (II), (III), and (IV) of the copending claim correspond to claimed formulae (I), (II), (III), and (IV), respectively (for claim 1).
Regarding claim 2: Copending claim 1 states that B in formula (II) may be O-CH2-CH2-N(R7)2 wherein R7 may be hydrogen, corresponding to claimed formula 8’.
Regarding claim 4: Note that copending claim 1 states that n1 is 1 to 50 and n2 is 1 to 50; the ratio of n2/n1 therefore ranges from 1/50 to 50/1, overlapping the claimed range.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 10,851,194. Although the claims at issue are not identical, they are not patentably distinct from each other.
Patented claim 4 recites a cosmetic composition comprising a (meth)acrylic silicone graft copolymer comprising units (I), (II), (III), and (IV) which are identical to claimed formulae (I), (II), (III), and (IV0, respectively (for claim 1).
The patented claims are silent regarding the claimed block structure.
It has been held that the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results; see In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). See also In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). (MPEP § 2144.04)(IV)(C)). Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare the block copolymer of the patented claims via a process of stepwise polymerization, resulting in the formation of a block copolymer.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1: Claim 1 states that the silicone graft copolymer block is represented by a formula (I); however, the claim identifies the recited structure with the descriptor “Chemical formula 1” while putting the symbol [I] next to the formula. The use of conflicting identifiers renders the claim indefinite, as it is unclear whether “Chemical formula 1” is intended to be the same structure as “formula (I)”, or if they are different structures.
Similarly, claim 1 recites the following pairs of what appear to be conflicting names for the same structural element
formula (II) vs. Chemical formula 5
general formula (1) vs. Chemical formula 2
general formula (2) vs. Chemical formula 3
general formula (3) vs. Chemical formula 4
formula (III) vs. Chemical formula 6
formula (IV) vs. Chemical formula 7
The claim should be amended so that a single term is used to reference each block/structural element of the claimed block copolymer.
For Chemical formula 3, the structure is blurred and what appears to be a superscript on the symbol L is not legible, rendering the claim unclear.
In Chemical formula 4, the superscripts on each variable L and the a in 3-a are not legible.
Claims 2 to 4 depend from claim 1 and do not correct these deficiencies. The claims are therefore indefinite per the same rationale as claim 1.
Regarding claim 2:Claim 2 states that B is represented by formula (8’) or (9’); however, the claim also recites the phrase Chemical formula 8. It is unclear what structure Chemical formula 8 is intended to reference. Also, the subscript on the repeating unit (C2H4O) is not legible, rendering the claim unclear.
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.
Claim(s) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hata, US2019/0248945.
Hata discloses the production of a (meth)acrylic silicone graft copolymer having a structure preferably comprising units of formula (I) and formula (II) and having structures corresponding to formula (III) and (IV) each at a terminus (abstract, ¶0011-0012, 0023).
Regarding claimed formula (I): The prior art copolymer comprises units of formula (I) shown below (abstract, ¶0011-0012, 0023, 0035).
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In the structure above, R1 can be hydrogen or methyl and A can be the structure shown below (¶0035).
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Note that this corresponds to claimed formula (I) (for claim 1) wherein Z is a divalent, saturated C3 hydrocarbon group (for claim 3).
Regarding claimed formula (II): The prior art copolymer comprises units of formula (II) shown below wherein R6 is a hydrogen or methyl group and B can be a monovalent C1 to 20 hydrocarbon group containing an -O- (¶0011-0012, 0023). The prior art formula (II) therefore corresponds to claimed formula (II) (for claim 1).
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Hata teaches the use of ethyltriglycol (meth)acrylate as the monomer used for this unit, corresponding to claimed formula 9’ wherein n3 is 3 and R3 is a saturated C2 hydrocarbon group (for claim 2).
Regarding claimed formula (III): The prior art polymer has a structure represented by formula (III) shown below at one terminus, wherein R7 is a C1 to C4 alkyl group and R8 and R9 can be hydrogen or a C1 to C4 alkyl (abstract, ¶0011-0012, 0023). The prior art formula (III) therefore corresponds to claimed formula (III) (for claim 1).
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Regarding claimed formula (IV): The prior art polymer has a structure represented by formula (IV) shown below at its other terminus, wherein R10 is hydrogen or methyl and X can be the same as variable A in formula (I) (abstract, ¶0011-0012, 0023). The prior rt formula (IV) therefore corresponds to claimed formula (IV) (for claim 1).
Regarding the requirement of a block copolymer: Hata teaches that the prior art copolymer may be prepared via stepwise polymerization of the monomers (¶0061). One of ordinary skill in the art will recognize that this will result in the production of a block copolymer (for claim 1) comprising a block of the prior art formula (I), corresponding to the claimed silicone graft copolymer block (for claim 1), and a block comprising units of prior art formula (II), corresponding to the claimed polar block (for claim 1).
Regarding the amounts of monomers: Hata teaches that q, corresponding to claimed variable n2, and p, corresponding to claimed variable n1, are each integers of 1 or more (for claim 1) (¶0041). The ratio of p/q is therefore > 0, overlapping the claimed range.
Hata does not specifically disclose the production of a block copolymer.
As noted above, Hata specifically teaches that the prior art copolymer may be prepared via a process comprising the steps of 1) first polymerizing the monomers corresponding to prior art formula (I), then 2) after confirming polymerization of step (1) is complete, adding the monomers corresponding to formula (II) and polymerizing to form an AB block copolymer (¶0061).Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious before the effective filing date to prepare a block copolymer having the required structure in view of Hata.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Hilty et al, EP424000.
Hilty discloses the production of a copolymer comprising a silicone acrylate and organic acrylate comonomer(s) (abstract).
Regarding claimed formula (I): The prior art silicone acrylate may have the structure shown below (page 2: lines 34-47).
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In the structure above, R2 is a hydrogen or methyl group, corresponding to claimed R1; R1 is a C1 to C6 alkylene group, corresponding to Z which is a divalent saturated C1 to C6 hydrocarbon (for claims 1, 3); and each R3 can be a C1 to C4 alkoxy, corresponding to claimed variable R4. The prior art silicone acrylate therefore corresponds to claimed formula (I) wherein A is represented by general formula (2) and ai is 3 (for claim 1).
Regarding claimed formula (II): The organic acrylate may be 2-dimethylaminoethyl methacrylate (page 3: line 36), corresponding to claimed formula R1 is a methyl group, B is formula 8’ in which each R7 is a C1 alkyl group (for claims 1, 2). The prior art organic acrylate therefore corresponds to claimed formula (II):
Regarding claimed formula (III) and (IV): Hilty teaches that polymerization is performed using an initiator of the formula (R7)3SiZ (page 3: lines 40-42), with the preferred initiator being {(1-methoxy-2-methly-1-propenyl)oxy}trimethylsilane (page 4: lines 52-57), which has the structure shown below.
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Note that this compound is taught by the instant specification as being an embodiment of the initiator which is used to prepare a polymer having the required terminal groups (III) and (IV) (see specification ¶0022-0023: Chemical formulae 32). As the prior art polymer is made using the same initiator as used to introduce the required end groups of formula (III) and (IV), it is reasonably expected that the prior art process will result in the production of a polymer having a group corresponding to claimed formula (III) at one terminus and a group corresponding to claimed formula (IV) at is other terminus (for claim 1).
Regarding the requirement of a block copolymer: Hilty teaches that the prior art copolymer may be a block copolymer (page 2: lines 20-21).
Regarding variables n1 and n2: "[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP § 2144.01). As noted above, the prior art teaches a copolymer that comprises a silicone acrylate monomer and an organic acrylate monomer-i.e., the copolymer comprises at least one repeating unit of each. Furthermore, note that Hilty does not place any limitations on the amount of each monomer. One of ordinary skill in the art will therefore recognize that the number of repeating units for each of the silicone acrylate (for variable n1) and the organic acrylate (for n2) is in the range of ≥ 1 (for claim 1).
Regarding claim 4: Hilty teaches that the ratio of silicone acrylate to organic acrylate is in the range of 0.1:1 to 20:1 (page 5: lines 37-43). The ratio of organic acrylate to silicone acrylate (i.e., n2/n1) would therefore be in the range of 1:20 to 1:0.1-i.e., 0.05:1 to 10:1.
Hilty does not specifically disclose the production of a block copolymer wherein the amount of each repeating unit is in the range of 1 to 50.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (" (MPEP § 2144.05).
As noted above, an ordinary artisan will reasonably infer that the prior art polymer comprises repeating units of the silicone acrylate monomer in an amount ≥ 1and the organic acrylate monomer in an amount ≥ 1. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to prepare a block copolymer having the required structure in view of the teachings of Hilty (for claim 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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