DETAILED ACTION
Previous Rejections
Applicants' arguments, filed 02/13/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103 (New, Necessitated by Amendment)
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.
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.
Claims 1-6, 10, and 13-16 are rejected under 35 U.S.C. 103 as being as being obvious over Hayakawa et al (US 2011/0301247 A1) in view of Farran et al. (US 2021/0196586 A1).
Regarding claim 1, Hayakawa discloses a cosmetic product, which may be a liquid [0042], to be externally applied to the skin (abstract, [0042]) which includes a silicone-modified polymer containing a norbornane moiety ([0014], Formula 1), a volatile oil such as the hydrocarbon oil, isododecane [0046]-[0047], and a polyol, such as propylene glycol, present in an amount of 0.1 to 98 wt.% [0055]. Hayakawa discloses that the silicone-modified polymer containing a norbornane moiety is a film-forming polymer in the cosmetic product [0007].
Hayakawa does not disclose a norbornene/tris(trimethylsiloxy)silylnorbornene copolymer is present in an amount of 13-30 mass %.
Farran discloses a cometic product for the skin (abstract) with a norbornene/tris(trimethylsiloxy) silylnorbornene copolymer as a film former in an amount of 5-45 wt.% [0197] [0015]. Farran teaches that the film former when applied to skin, leaves a pliable, cohesive and continuous covering [0005] [0103]-[0104].
Since Hayakawa generally teaches a cosmetic product for the skin with a silicone-modified polymer containing a norbornane moiety as a film-forming polymer, it would have been prima facie obvious to one of ordinary skill in the art to include a norbornene/tris(trimethylsiloxy) silylnorbornene copolymer in an amount of 5-45 wt.%, within the teachings of Hayakawa, because Farran teaches this amount of norbornene copolymer as a film former in a cosmetic composition. An ordinarily skilled artisan would be motivated to use a norbornene/tris(trimethylsiloxy) silylnorbornene copolymer in the amount taught by Farran because Farran teaches it as a film former which when applied to skin in this amount, leaves a pliable, cohesive and continuous covering [0005] [0103]-[0104].
Further regarding claim 1, while Hayakawa does not specifically disclose the volatilization rate of the volatile oil, an R.H. of 60% for 30 minutes, or that the kinematic viscosity of isododecane is 2 cSt or less at 25°C, a chemical composition and its properties are inseparable. MPEP 2112.01 II. Therefore, because the prior art teaches a preparation to be externally applied to the skin with an instantly claimed volatile oil (e.g., isododecane), the properties the applicant discloses and/or claims are necessarily present.
In regards to the amounts of the components, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.
Further regarding claim 1, the specific mass ratio of the component (A) to the component (C), (A)/(C), would be achieved through routine optimization. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A). In this case a norbornene/tris(trimethylsiloxy) silylnorbornene copolymer (A) in an amount of 5-45 wt.% and a polyol (C) in an amount of 0.1 to 98 wt.%. have been taught by the prior art; as such, it would not have been inventive for the skilled artisan to have discovered the optimal mass ratio via routine experimentation.
Claim 2 is rendered prima facie obvious because Hayakawa discloses a volatile oil such as isododecane [0046] is present in the cosmetic product in an amount of 1 to 98 wt.% [0054]. A prima facie case of obviousness exists because of overlap, as discussed above.
Claim 3 is rendered prima facie obvious because Hayakawa discloses a polyol, such as propylene glycol [0055].
Claim 4 is rendered prima facie obvious because Hayakawa discloses a polyol, such as propylene glycol, is present in the cosmetic product in an amount of 0.1 to 98 wt.% [0055]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Claim 5 is rendered prima facie obvious because Farran discloses a norbornene/tris(trimethylsiloxy) silylnorbornene copolymer in an amount of 5-45 wt.% [0197] [0015] and Hayakawa discloses a volatile oil, such as isododecane [0046], is present in an amount of 1 to 98 wt.% [0054]. The specific mass ratio of the component (A) to the component (B), (A)/(B), as recited in claim 5, would be achieved by one of ordinary skill in the art through routine optimization. See MPEP 2144.05(II)(A).
Claim 6 is rendered prima facie obvious because Hayakawa discloses the cosmetic product further comprises surface active agents [0069]-[0071].
Claim 10 is rendered prima facie obvious because Hayakawa discloses the cosmetic product can be applied to the skin [0042] and is expected to find use as an antiwrinkle preparation [0121].
Claim 13 is rendered prima facie obvious because Hayakawa discloses the cosmetic product further comprises the non-volatile, ester oil, isononyl isononanoate [0050].
Claim 14 is rendered prima facie obvious because Hayakawa discloses the cosmetic product further comprises water [0057].
Claim 15 is rendered prima facie obvious because Farran discloses a norbornene/tris(trimethylsiloxy) silylnorbornene copolymer (A) in an amount of 5-45 wt.% [0197] [0015] and Hayakawa discloses a polyol (C) in an amount of 0.1 to 98 wt.% [0055]. It would not have been inventive for the skilled artisan to have discovered the optimal mass ratio via routine experimentation, as previously discussed.
Claim 16 is rendered prima facie obvious because Farran discloses a norbornene/tris(trimethylsiloxy) silylnorbornene copolymer (A) in an amount of 5-45 wt.% [0197] [0015] and Hayakawa discloses a volatile oil (B), such as isododecane [0046], is present in an amount of 1 to 98 wt.% [0054] and a polyol (C) in an amount of 0.1 to 98 wt.% [0055]. A prima facie case of obviousness exists because of overlap, as previously discussed.
Response to Arguments
Applicant' s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Potentially Allowable Subject Matter
Claim 17 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The subject matter of claim 17 is allowable because the applicant has demonstrated unexpected and advantageous results with a composition of a norbornene/tris(trimethylsiloxy)silylnorbornene) copolymer (A) in an amount of 13 to 18 mass %, a volatile oil (B) in an amount of 70 to 85 mass %, and a polyol (C) in an amount of 0.4 to 5 mass %, wherein a mass ratio of the component (A) to the component (C), (A)/(C), is from 3.3 to 34 in comparison to the more general, broader ranges taught by Farran and Hayakawa.
Farran discloses a norbornene/tris(trimethylsiloxy) silylnorbornene copolymer (A) in an amount of 5-45 wt.% [0197] [0015] and Hayakawa discloses a volatile oil (B), such as isododecane [0046], is present in an amount of 1 to 98 wt.% [0054] and a polyol (C) in an amount of 0.1 to 98 wt.% [0055].
The Declaration submitted 05/06/25, sets forth a comparison between Examples 3 and 6, which have a ratio (A)/(C) of 32.5 and 3.3, respectively as compared to comparative examples A and B, which have a ratio (A)/(C) of 2.0 and 118.2, respectively. Evaluations for “wrinkle-reducing effect”, the “state of thickness of coating film after coating and drying”, and the “state of cloudiness after coating and during drying” of the comparative examples were found to be inferior to those of Examples 3 and 6. Claim 17 is in scope with this showing. Table 1 of the as-filed specification [0139] demonstrates that the specific ranges claimed in claim 16 of components (A), (B), and (C) show better wrinkle-reducing effect, state of thickness of coating film, and state of cloudiness compared to compositions lacking these components/having amounts outside this range (e.g., Example 7 which has only 5 wt.% of component (A) does not have as good of a wrinkle reducing effect; Examples 13 and 14 which have different polymers than a norbornene/tris(trimethylsiloxy) silylnorbornene copolymer do not show as beneficial of results, Comparative Ex. 1 which does not contain a polyol does not have as good of a state of thickness/state of cloudiness).
The prior art does not teach or suggest the unexpected effect of the specific components (A), (B), and (C) in the amounts and ratio claimed in claim 17 to afford the improved properties of the inventive compositions (better wrinkle-reducing effect, state of thickness of coating film, and state of cloudiness).
Terminal Disclaimer
The terminal disclaimer filed on 05/06/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 17/789,286, 17/789,363, 17/995,265, 17/995,276, and 17/995,270 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612