DETAILED ACTION
Claim Rejections - 35 USC § 112
Claim 12 is 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.
The breadth of the term “type” in this claim is unclear such that this renders the
claim indefinite. For instance it is unclear how this “type” formulation differs from the formulation in claim 1. The distinction it should be clear. If there’s not a distinction then this claim would not appear to be further limiting (though such a rejection is not be made at this time in an effort to allow applicants to clarify).
Claim 16 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. It is unclear what is embraced by a “use” claim.
Also in claim 16, the term “especially” renders the breadth unclear because it is not clear what weight to give this preferred embodiment.
Claim 16 is also rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because “use” is not a proper category.
Claims 8 and 20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 8 is drawn to a product that contains an inverted emulsion of the O/W emulsion. Such a product is not an O/W emulsion and as such is outside the breadth of claim 1.
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.
Claims 1 to 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 to 20 of copending Application No. 17/997,994. Although the claims at issue are not identical, they are not patentably distinct from each other because the oil in water emulsion in claim 1 of ‘994. Is the same as the oil in water emulsion found in the cosmetic product of instant claim 1. Note too the common limitations in claims 2 to 8 of ‘994 as they correspond to instant claims 2 to 5. Note too that claim 10 in ‘994 is drawn to an inverted emulsion comparable to instant claim 8. Claims 11 to 14 in ‘994 are specifically directed to a personal care composition that contains the same O/W emulsion as in instant claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 to 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Czech et al. 6,207,782.
Czech et al. teach a silicone latex which, by definition, is an oil in water emulsion.
The latex is prepared by the free radical polymerization of an acrylated siloxane in an emulsion. See for instance column 1, lines 40 to 66. Further teachings starting in column 3, line 5, include the dispersion of the acrylated polysiloxane in water with 5 to 50 wt% of a siloxane emulsifier and specifically refer to the dispersed siloxane phase. The emulsifier is further disclosed in column 3, lines 43 to 50, as a polyether siloxane. Thus Czech et al. teach an O/W emulsion prepared by the free radical polymerization of an unsaturated group containing siloxane in the presence of a polyether modified polysiloxane.
On one hand, the emulsion is all that is required for the claimed cosmetic product (supported by instant claim 7 which allows for 100 wt% of the emulsion in the product) such that this emulsion anticipates claim 1. On the other hand, see column 3, lines 62 to 67 which teaches person care products including cosmetics. See also column 4, lines 28 to 55. In this manner as well Czech et al. anticipates claim 1.
For claims 2 and 17, the unsaturated groups in these claims are given breadth
due to the language “unsaturated group of up to 30 carbon atoms” and “acrylate groups” such that they allow for the polyether linking group found in the acrylated siloxane of Czech et al.
For claims 3 and 18, note that such a siloxane is optional an as such need not be present in Czech et al. for these claims to be anticipated.
For claims 4 and 19, the Silwet surfactants in col. 3, line 43 and 44 of Czech et al. fall within these structures. While this is not specifically shown by Czech et al. the Examiner notes that the applicant represents a company that is a leader in the silicone field such that the applicants and/or inventors would readily recognize that the prior art surfactants fall within breadth of those claimed.
For claim 5 again see column 3, line 9.
For claim 6 note that Example 3 includes propylene glycol, a humectant such that the skilled artisan would have anticipated such an additive in the latex of Czeck et al., particularly in view of the teachings in column 4, lines 20 to 55.
For claim 7, note that supra regarding 100 wt%. On the other hand, see column 4 which teaches that up to 5 wt% of the solids remaining on a substrate which would correspond to an amount within the claimed range.
For claim 8 note that Czech et al. teach preparing a water in oil emulsion from the latex, as seen in column 3, line 34, which corresponds to the phase inversion in this claim.
For claims 9 to 15 note that the latexes prepared in Czech et al. are admixed with other formulations, such as the Model Formulation Control Lipstick in column 6. This meets the separate, different formulation as claimed. Furthermore these are present in separate containers and are mixed prior to applying. This meets these claims.
For claim 16, while it is unclear what “use” entails note column 3, line 64, through column 4 which teaches many of the products in these claims.
For claim 20, note that this is a product by process limitation by which the phase inversion is prepared. While this is not specifically taught by Czech et al. the prior art does teach a phase inverted emulsion such the product per se appears to be the same.
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.
Claims 2 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Czech et al. 6,207,782 in view of Xing et al. 2017/0348220.
In the event that applicants amend the claims and/or argue that the claims do
not allow for the polyether linking group found in the acrylated polysiloxanes of Czech et al., this rejection is being made.
Xing et al. teach a cosmetic formulation containing the product of an unsaturated polysiloxane that is emulsion polymerized by free radicals in the presence of surfactant. See for instance the abstract. This teaches various unsaturated polysiloxanes that can be used in the polymerization and product thereof. Of particular importance to this claim see paragraph 30 which teaches various polymerizable groups including ones that are attached to the siloxane backbone via a polyether group, or without. In formula I(d) “q” to “s” can be 0 (no polyether) or 1 to 60 (with polyether). Additionally these acrylated groups can be used in the alternative with vinyl and allyl groups as shown in I(a).
From this one having ordinary skill in the art would have found it obvious to use an acrylate group without being bonded to the siloxane by means of a polyether group, or even to use a vinyl or allyl group, in the reaction and subsequent product of Czech et al. with a reasonable expectation of success. It is prima facie obvious to substitute equivalents, motivated by the reasonable expectation that the respective species will behave in a comparable manner or give comparable results in comparable circumstances. The express suggestion to substitute one equivalent for another need not be present to render the substitution obvious. In this manner the specific siloxanes in claims 2 and 17, and the limitations of these claims, are rendered obvious by this combination.
Claims 1 to 7, 9 to 19 are rejected under 35 U.S.C. 103 as being unpatentable over Xing et al. in view of Czech et al.
With an expectation that applicants could amend the claims to require an organo-
hydrogenpolysiloxane, the following rejection is being made.
Xing et al. teach a crosslinking polysiloxane personal care composition in which an unsaturated siloxane undergoes free radical polymerization in an emulsion in the presence of a surfactant. Particular surfactants include “any of those heretofore used in emulsion polymerization process”. Xing et al. also teach the polymerization proceeding in the presence of ethylene oxide/propylene oxide copolymers and non-reactive poly-organosiloxanes.
In support of these remarks the Examiner draws attention to paragraphs 4, 5, 42, 43 and 46 to 50.
While Xing et al. teach that the polymerization can take place in the presence of the genus of polymers including non-reactive polyorganosiloxanes and ethylene oxide/ propylene oxide copolymers (i.e. a polyether), they do not specifically teach polymeriza-tion in the presence of a polyether modified polysiloxane.
Czech et al., the teachings of which are noted supra, teach a similar composition. This teaches an emulsion polymerization process in the presence of silicone surfactant which is a polyether modified siloxane. See again the teachings in column 3 of Czech et al.
As such one having ordinary skill in the art, having read that “any of those hereto-fore employed in emulsion polymer processes” (with regard to emulsifier selection) would have found it obvious to select the silicone surfactant in Czech et al. with the expectation of obtaining useful and predictable results. Applicants are merely using a known emulsifier in a known system for its known property. In this manner claim 1 is rendered obvious.
For claims 2, 3, 17 and 18 see paragraphs 28 to 39 which show such formulas. See also Table 1.
For claims 4 and 19, note that supra regarding the known structure of Silwet siloxane surfactants.
For claim 5, note that adjusting the amount of emulsifier in the polymerization and product of Xing et al. would have been obvious to one having ordinary skill in an effort to optimize the emulsification stability, particle size and the effects thereof on the final product and utility. When the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
For claim 6 see both compositions in paragraph 78 and 86 which include butyl-ene glycol and glycerine, both of which are humectants, such that the skilled artisan would have been motivated to include the known and common additives in the products therein.
For claim 7, see paragraph 59 which teaches such amounts.
For claims 9 to 16 note that the working examples all show compositions in which two formulations are admixed prior to use as a make-up of cosmetic composition. See also paragraphs 62 to 64 which teaches adding the emulsion found in Xing et al. to other formulations. Such an addition will necessarily require at least 2 containers for each component.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
11/29/25
/MARGARET G MOORE/Primary Examiner, Art Unit 1765