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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 23, 2026 has been entered.
Status of Claims
Claims 1, 4, 6-8 and 10-11 are pending. Claims 10-11 are newly added. Claims 2-3, 5 and 9 are canceled. Claims 1 and 8 are amended.
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Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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Rejections Withdrawn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 § 103
In light of the amendments to the claims 1, 4 and 6-8 under 35 U.S.C. 103 as being unpatentable over JP 2012-017317 (1/26/2012)(“JP 2012”) in view of JP 10-45536 (2/17/1998)(“JP10”), Bhaskar et al. WO 2010/03806 (1/14/2010) and KR 2012/0089329 (8/9/2012)(“KR 2012”) is withdrawn.
Double Patenting
In light of the filing and approval of the terminal disclaimer the provisional rejection of claims 1, 4, and 6-8 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-9 of U.S. Patent Appn. No. 17/995270 in view of JP 2012-017317 (1/26/2012)(“JP 2012”), Bhaskar et al. WO 2010/03806 (1/14/2010) and KR 2012/0089329 (8/9/2012)(“KR 2012”) is withdrawn.
In light of the filing and approval of the terminal disclaimer the provisional rejection of claims 1, 4, and 6-8 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-14 of U.S. Patent Appn. No. 17/995265 in view of JP 2012-017317 (1/26/2012)(“JP 2012”), Bhaskar et al. WO 2010/03806 (1/14/2010) and KR 2012/0089329 (8/9/2012)(“KR 2012”) is withdrawn.
In light of the filing and approval of the terminal disclaimer the provisional rejection of claims 1, 4, and 6-8 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-9 of U.S. Patent Appn. No. 17/995277 in view of JP 2012-017317 (1/26/2012)(“JP 2012”), Bhaskar et al. WO 2010/03806 (1/14/2010) and KR 2012/0089329 (8/9/2012)(“KR 2012”) is withdrawn.
New Rejections
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 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.
Claim 1, 4, 6-8 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2012-017317 (1/26/2012)(“JP 2012”) in view of JP 10-45536 (2/17/1998)(“JP10”), Bhaskar et al. WO 2010/03806 (1/14/2010), Lebre et al. US 2005/0226833 (10/13/2005) and KR 2012/0089329 (8/9/2012)(“KR 2012”).
JP 2012 discloses a cosmetic comprising a polymer having repeating units represented by general formula (I) and a volatile silicone oil. (See Abstract, claims 1-6 and Section III) JP 2012 also teaches that A: tris(trimethylsilyloxy)silylnorbornene was synthesized and that by polymerization reaction of the monomer A and a monomer C (norbornene), a polymer (I:1): tris(trimethylsiloxy) silylnorbornene-co-norbornene addition copolymer was synthesized. (See [0088] and [0092]). A volatile oil is called for in claims 1 and 8 as component A2. Tris(trimethylsilyloxy)silylnorbornene -co-norbornene addition copolymer is a norbornane-comprising silicone modified polymer as called for in instant claim 1 and a polymer comprising a norbornane structure. The cosmetic can also comprise a cellulose powder as called for in instant claims 1 and 8. (See Section (D)). The powder can be present in an amount of from 0.1 to 10% which overlaps with the 0.1 to 99% called for in claim 6. (See Section (III) Cosmetics)
JP 2012 further discloses in example 18 a liquid W/O foundation comprising 16.0% by mass of decamethylcyclopentasiloxane, 2.0% by mass of dimethylpolysiloxane (6 cst) and 4.0% by mass of a solution (30% by mass) of the polymer (I-1) in isododecane. Volatile silicone oils are called for in instant claim 5. 16% decamethylcyclopentasiloxane falls within the from 1 to 98% called for in instant claim 6. (4% x 30% = 1.33%) 1.33% of polymer 1 falls within the from 0.01 to 30% called for in instant claim 4.
The polymer (I:1): tris(trimethylsiloxy) silylnorbornene-co-norbornene addition copolymer reads on the silicone modified polynorbornene of the formula (6) in instant claim 3. The copolymer has repeating units, so the value of e and f are an integer of 1 or above as called for in instant claim 3. The polymer is a norbornane structure-comprising silicone-modified polymer called for in instant claim 1. JP 2012 teaches its cosmetic product gives a good feel while providing good retention of the cosmetic effect against peeling or falling off. (See Abstract).
JP 2012 teaches a pigment in an amount of 5% in Example 9 and in an amount of 16% in Example 11. 5% falls within the from 2 to 25% called for in instant claims 1 and 8.
JP 2012 does not indicate that a composition comprising one or two or more substances selected from polyols and liquid oils other than the liquid W/O foundation is applied to the skin. JP 2012 does not teach a mixture of isodecane and hexamethyldisiloxane. These deficiencies are made up with the teachings of JP10, Bhaskar, KR 2012 and Lebre et al.
JP10 discloses a water-in-oil emulsion composition comprising a silicone-modified pullulan having the structure of general formula (1) wherein the Glu moiety is the glucose residue of pullulan, and a silicone-based oil substance. JP10 also discloses in Example 27 a liquid emulsion foundation comprising 3.0% by weight of silicone-modified pullulan and 5.0 % of dimethylpolysiloxane with the balance being decamethylcyclopentasiloxane. JP10 also teaches a two step makeup method that comprises applying a makeup of a base material to the skin and then applying a makeup consisting of a powder to the skin afterwards. (See claim 3 and throughout). JP10 teaches that this cosmetic method is excellent in persistence of cosmetic effects and improves the durability of the cosmetics applied last. (See [0001]).
Bhaskar et al. (Bhaskar) teaches a two-step method of lightening skin and removing blemishes on the skin that comprises a first step of applying an alcohol composition to the skin followed by a second step of applying a skin lightening composition to the skin. (See Abstract and claim 1). Bhaskar teaches that its method is especially effective to lighten skin.
Bhaskar also teaches a cosmetic kit for the two step cosmetic method with separately packaged compositions as called for in instant claim 8. (See claims 12-13). Bhaskar also teaches that its composition can comprise a vehicle that is an emollient and a silicone oil such as dimethylpolysiloxane. Dimethylpolysiloxane is called for in instant claims 10 and 11. (See page 8, lines 5-15).
Lebre et al. (Lebre) teaches a composition for caring for and /or making up the kin, lips and/or keratinous substances with at least one unsaturated ester having a relatively low melting point and at least one hydrocarbon wax having a relatively high melting point. (See [0007]). The combination of this wax and this ester makes it possible to confer a feeling of melting, of slip and of softness as well as good mechanical and thermal stability over time. (See [0010] and [0011]).
The cosmetic composition can comprise an additional fatty substance other than the ester and the wax and this can be a volatile oil that can be a mixture of isodecane and hexamethyldisiloxane. (See [0062]). A mixture of isodecane and hexamethyldisiloxane is called for in instant claim 1. Lebre teaches that the mixture can be present in an amount of from 0.01 to 50%. (See [0063]).
With respect to claim 1, JP 2012 teaches 4.0% by mass of a solution (30% by mass) of the polymer tris(trimethylsiloxy) silylnorbornene-co-norbornene addition copolymer. This is 1.2% by mass of the polymer tris(trimethylsiloxy) silylnorbornene-co-norbornene addition copolymer. A1 is thus 1.2% by mass and A2 is 0.01 to 50%. This overlaps with the ratio of (A1)/(A2) of from 0.02 to 0.23. (For example, if 6% is chosen for A2, then the ratio is 0.20 which falls within the range of 0.02 to 0.23 called for in instant claim 1).
With respect to the two step method of claim 1, JP 10 teaches applying a composition X and Bhaskar teaches applying it directly to the skin and then JP 10 teaches the second step of applying a composition that comprises a powder and Bhaskar teaches applying it directly to the skin.
KR 2012 teaches an excellent oil thickener that can freely control the form and viscosity of an oil-based cosmetic that comprises silicone oils (See Abstract and [0239]). KR 2012 teaches that examples of suitable silicone oils are linear organopolysiloxanes such as dimethylpolysiloxanes having a low viscosity such as 2cSt. (See [0239]). 2cSt is called for in instant claim 9. KR 2012 teaches that dimethylpolsiloxanes having a viscosity of 2 cSt and dimethylpolsiloxanes having a viscosity of 6 cSt are equivalent. (See [0239]).
It would have been prima facie obvious for one of ordinary skill in the art making the JP 2012 composition of a liquid W/O foundation comprising 16.0% by mass of decamethylcyclopentasiloxane, 2.0% by mass of dimethylpolysiloxane (6 cst) and 4.0% by mass of a solution (30% by mass) of the polymer (I-1) in isododecane to substitute the 6 cst dimethylpolysiloxane with a dimethylpolysiloxane having a viscosity of 2 cSt as taught by KR 2012 in light of KR 2012’s teaching that they are equivalent.
It would have been prima facie obvious for one of ordinary skill in the art following the JP 2012 cosmetic method to apply the polymer (I:1): tris(trimethylsiloxy) silylnorbornene-co-norbornene to the skin as taught by Bhaskar in the first step as taught by JP 10 and then would apply the powder composition to the skin as taught by Bhaskar in the second step as taught by JP 10 in order to have an effective cosmetic method for cosmetics that last and are durable as taught by JP 10.
It would also have been prima facie obvious before the earliest effective filing date for one of ordinary skill in the art following the JP 2012 in view if JP 10, Lebre and Bhaskar method to replace the isododecane with a mixture of isodecane and hexamethyldisiloxane as taught by Lebre in the Example 18 of JP 2012 in the amount of from 0.01 to 50%.
With respect to claims 10 and 11, JP 2012 teaches 4.0% by mass of a solution (30% by mass) of the polymer tris(trimethylsiloxy) silylnorbornene-co-norbornene addition copolymer. This is 1.2% by mass of the polymer tris(trimethylsiloxy) silylnorbornene-co-norbornene addition copolymer. A1 is thus 1.2% by mass. Lebre teaches 0.01 to 50% mixture of isodecane and hexamethyldisiloxane, so A2 is 0.01 to 50%. JP 2012 teaches 2% mass 2 cst dimethylpolysiloxane which can be added to the 0.01 to 50% mixture of isodecane and hexamethyldisiloxane and overlaps with the A1/A2 ratio range.
Response to Arguments
Applicants’ arguments in the response dated February 6, 2026 are reviewed and are found to be partly persuasive in light of the amendments to the claims.
Applicant submits the rejection cannot be sustained in light of the amendments to the claims.
Applicants assert that KR2012 does not teach that low viscosity silicone oils are generally acceptable for use in cosmetics or that a dimethylpolysiloxane having a low viscosity such as 2 cSt is such an excellent oil thickener to control the form and viscosity of a cosmetic. KR 2012 teaches a thickening agent for such low viscosity oils and Applicants assert that such low viscosity oils are sometimes difficult to use. Applicants assert that this is the motivation for providing a thickening agent.
Applicants assert that a skilled artisan would appreciate that dimethylpolysiloxane having a viscosity of 2cSt is suitable for use only in conjunction with a thickening agent, otherwise the viscosity would be too low.
Applicants take issue with the assertion that by varying the amount of the dimethylpolysiloxane the mass ratio value in claim 1 would be reached. Applicants assert that the rationale is not supported. Applicants assert that to the extent that an A1/A2 ratio is taught by JP 2012, the cited references teach a non-overlapping range without any guidance as to any promising direction in which to vary the ratio. This would amount to undue experimentation.
Applicants further assert that the cited references do not teach the use of hexamethyldisiloxane, let alone a combination of hexamethyldisiloxane and isodecane.
Applicants note the filing of the terminal disclaimer with respect to the obviousness-type double patenting rejections.
Applicants arguments are persuasive in regards to the cited references not teaching the use of hexamethyldisiloxane in light of the amendments to the claims. The rejection has been withdrawn above.
Applicants’ argument that KR2012 does not teach that low viscosity silicone oils are generally acceptable for use in cosmetics is not found to be persuasive, however. Applicants arguments’ overlook that KR 2012 uses a low viscosity silicone oils in an Example (Manufacture example 5) of its own cosmetic. Therefore, they are generally acceptable for use in cosmetics, since KR2012 is exemplifying the successful use of such an oil in its own invention.
Applicants’ argument that low viscosity silicone oils are not generally acceptable for use in cosmetics is also contradicted by JP 2012’s use of a low viscosity dimethylpolysiloxane (6 cst). As noted above, KR2012 teaches the equivalence of 6 cst dimethylpolysiloxane and dimethylpolysiloxane having a viscosity of 2 cSt, and the rejection above relies on the substitution of the 6 cst dimethylpolysiloxane with a dimethylpolysiloxane having a viscosity of 2 cSt in light of KR 2012’s teaching that they are equivalent.
Specifically, it would have been prima facie obvious for one of ordinary skill in the art making the JP 2012 composition of a liquid W/O foundation comprising 16.0% by mass of decamethylcyclopentasiloxane, 2.0% by mass of dimethylpolysiloxane (6 cst) and 4.0% by mass of a solution (30% by mass) of the polymer (I-1) in isododecane to substitute the 6 cst dimethylpolysiloxane with a dimethylpolysiloxane having a viscosity of 2 cSt as taught by KR 2012 in light of KR 2012’s teaching that they are equivalent.
Applicants remaining arguments are moot in light of the new rejections applied above.
The obviousness-type double patenting rejections have been withdrawn above in light of the filing and approval of the terminal disclaimer.
Conclusion
No claims are allowed.
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SARAH CHICKOS
Examiner
Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619