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
Claims 8, 23 and 28 are pending. Claims 1-7, 9-22 and 24-27 are canceled. Claims 8, 23 and 28 are amended.
Claims 8, 23 and 28 are examined on their merits in light of the elected species of 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane and ethylhexyl methoxycinnamate.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Rejections Withdrawn
Claim Rejections - 35 USC § 112(b)
In light of the amendments to the claims and the cancelation of claims the rejection of claims 9-11, 13-14, 16-17, 19-20, 24-25 and 28 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention is withdrawn.
Claim Rejections - 35 USC § 103
In light of the cancelation of claims the rejection of claims 9-22 and 24-27 under 35 U.S.C. 103 as being unpatentable over Nielson et al. US 2004/0258646 (12/23/2004) in view of Auguste et al. US 2004/0197284 (10/7/2004) as evidenced by the instant specification is withdrawn as moot.
Double Patenting
In light of the filing and approval of the terminal disclaimer the rejection of claims 8-28 as being unpatentable over claims 1-12 of U.S. Patent No. 11389389 in view of Nielson et al. US 2004/0258646 (12/23/2004) and Auguste et al. US 2004/0197284 (10/7/2004) is withdrawn.
In light of the filing and approval of the terminal disclaimer the provisional rejection of claims 8-28 as being unpatentable over claims 1-12 of U.S. Patent Appn. No. 18/595636 in view of Nielson et al. US 2004/0258646 (12/23/2004) is withdrawn.
Rejections Maintained
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
The rejection of claims 8, 23 and 28 under 35 U.S.C. 103 as being unpatentable over Nielson et al. US 2004/0258646 (12/23/2004) in view of Auguste et al. US 2004/0197284 (10/7/2004) as evidenced by the instant specification is maintained.
Nielson teaches oil-in water-emulsions containing interface active substances and ascorbic acid that have excellent usability, stability and bioavailability. (See Abstract, [0021]). Nielson teaches that its emulsions are advantageous and comprise fats, oils , waxes and other fatty substances. (See [0067]). Nielson teaches that its emulsions are ideal for cosmetic or dermatological preparations and can incorporate antioxidants and are particularly suitable for the treatment or prevention of UV light-induced skin damage or skin aging effects. (See [0031]).
Nielson teaches that beeswax is a naturally occurring emulsifier. (See [0101]). Beeswax is called for in instant claim 23. Beeswax is an oily substance that is solid at 25˚C as evidenced by the instant specification at [0024]. An oily substance that is solid at 25˚C is called for in instant claims 8 and 23.
Nielson teaches that octamethyltetrasiloxane can be advantageously included as the silicone oil to be used, but that other silicone oils can also advantageously be used in the invention. (See [0081]). Nielson teaches that an additional silicone oil such as dimethylpolysiloxane can be used in the invention. (See [0073]). Dimethylpolysiloxane is called for in instant claim 28.
Nielson teaches that UV absorbers can be used in its compositions. (See [0148]) One such UV absorber is 2-ethylhexyl methoxycinnamate. (See [0152]). 2-ethylhexyl methoxycinnamate is an organic UV absorber as called for in instant claim 8.
Nielson teaches octomethyltetrasiloxane but does not expressly teach 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane. This deficiency is made up for with the teachings of Auguste.
August teaches a composition comprising a volatile silicone fatty phase comprising a volatile silicone oil. (See Abstract). August teaches that its composition can be used for making up and caring for human keratin materials. (See Abstract). 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane is a volatile silicone oil that is taught to be suitable in this invention. (See [0113]). August teaches that 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane has a desirable evaporation profile that allows the user to properly and uniformly apply the cosmetic. (See [0003], [0037]).
3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane is called for in instant claim 8. With respect to the properties called for in instant claim 8, boiling point and viscosity, of 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane, 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane is the exact same substance as that claimed and it has a boiling point in a range of 205 to 255 ˚C and a viscosity of less than 5 mm2/s at 25 ˚C as evidenced by the specification in [0012], [0026], [0028] and [0030]. A composition having the same components as those claimed will necessarily have the same properties as those claimed. See MPEP 2112.01[R-3]: “A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention making the Nielson composition of an oil-in water-emulsion containing beeswax, dimethylpolysiloxane, octamethyltetrasiloxane, surface active substances and ascorbic acid to select 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane as the octamethyltetrasiloxane as taught by August in order to have a octametyltetrasiloxane with a desirable evaporation profile for a cosmetic and in light of Nielson’s teaching that octamethyltetrasiloxanes are advantageous in its composition.
There would be an expectation of success because Nielson teaches that octamethyltetrasiloxanes are preferred for use in its compositions, so the 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane taught by August would be expected to work well in the Nielson composition. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), MPEP 2144.07.
Therefore, the claimed invention would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention because the prior art is suggestive of the claimed invention.
Response to Arguments
Applicants’ remarks filed October 29, 2025 have been fully considered and are found to be partly persuasive and partly unpersuasive as described below.
Applicants note the amendment to the claims and assert that the indefiniteness rejections have been addressed with the amendments to the claims. The Examiner agrees and the rejections are withdrawn above.
Applicants also note the filing of the terminal disclaimer. In light of the filing and approval of the terminal disclaimer, the obviousness-type double patenting rejections are withdrawn above.
Claim Rejections under 35 USC Sec. 103
With respect to the obviousness rejection Applicants argue that Nielson teaches octomethyltetrasiloxane but does not expressly teach 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane. Applicants note that octamethyletrasiloxanes are outside the scope of the claimed organisiloxane.
Applicants acknowledge that August describes “3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane”, which is within the scope of component (A) of amended claim 8. However, there is no suggestion that the combination of components (A) 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane and components (B) an organic ultraviolet absorber and/or an oily component can provide excellent solubility and compatability, especially for a cosmetic.
Applicants assert that Table 1 of the specification demonstrates the superior effects of the cosmetic that are achieved only by the limited components (A) and (B). These superior effects are excellent solubility and compatibility, and a cosmetic with a light touch, good spread, good feel, good stability and excellent water repellency.
Response
Applicants’ arguments that the prima facie obviousness case is not made because there is no suggestion that the combination of components (A) 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane and components (B) an organic ultraviolet absorber and/or an oily component can provide excellent solubility and compatability is not found to be persuasive because it is not necessary that the prior art recognize this.
As described in the rejection it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention making the Nielson composition of an oil-in water-emulsion containing beeswax, dimethylpolysiloxane, octamethyltetrasiloxane, surface active substances and ascorbic acid to select 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane as the octamethyltetrasiloxane as taught by August in order to have a octametyltetrasiloxane with a desirable evaporation profile for a cosmetic and in light of Nielson’s teaching that octamethyltetrasiloxanes are advantageous in its composition.
There would be an expectation of success because Nielson teaches that octamethyltetrasiloxanes are preferred for use in its compositions, so the 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane taught by August would be expected to work well in the Nielson composition. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), MPEP 2144.07.
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result is covered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) (“One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings.”); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991).
With respect to Applicant’s assertion of superior effects, many of these effects appear to be suggested by the prior art. Namely, Nielson teaches that its composition has excellent usability, stability and bioavailability that is suitable for the treatment or prevention of UV light-induced skin damage or skin aging effects. Additionally, August teaches that its composition has a pleasant feel upon contact with the skin and a lasting effect on the skin. (See [0003-5]).
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
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SARAH CHICKOS
Examiner
Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619