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 .
DETAILED ACTION
The Applicant’s reply filed on 5/14/26 is acknowledged. Claims 1, 4-8, 11, 12, 14-16, 18-24, 29, 32, 35, 36, 38, 39, 48, and 55-58 are pending.
Election/Restrictions
Applicant’s election without traverse of the invention of Group I, claims 1-8, 11-16 and 18-20, and the species of
a) as recited in claim 3(b)
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wherein: R1, R2, R3 are the same or different and are each selected from the group consisting of C1- C20 alkyl, Cl-C20 cycloalkyl, C1-C20 unsaturated alkyl, C1-C20 haloalkyl, hydroxylalkyl, alkoxyalkyl, carboxyalkyl, C6-C2o aryl, and substituted aryl; and
x and y are each independently an integer from 1 to 500; and
b) octyl methoxycinnamate (or octinoxate) recited in claim 8(b),
in the reply filed on 10/13/25 is acknowledged.
Claims 21-24, 29, 32, 35, 36, 38, 39, 48, and 55-58 are withdrawn as being drawn to a nonelected invention.
Claims 4, 11, and 12 are withdrawn as not being directed to the elected species.
Claims 1, 5-8, 14-16 and 18-20 are under consideration to the extent that the composition comprises the elected species.
Rejections Maintained and New Grounds of Rejections
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, 5-8, 14-16 and 18-20 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.
Claim 1 recites “(c) one or more light-filtering compounds covalently or non-covalently bound thereto or otherwise associated therewith”. It is unclear what the compound (c) is bound to or associated with. The claim recites compounds (a) and (b). It is unclear if (c) is bound to (a), (b), both, or either. Claims 5-8, 14-16 and 18-20 are rejected as depending from and not clarifying claim 1.
Claim 5 recites the limitation "the one or more polysiloxanes" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Claim 1, as amended, does not recite one or more polysiloxanes.
Claim 19 recites the limitation "the one or more crosslinked polysiloxanes" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Claim 1, as amended, does not recite one or more crosslinked polysiloxanes.
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.
Claims 1, 5-8, 14-16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Akthakul et al. (US 2021/0213047; effectively filed 11/9/2015) in view of Berg-Schultz et al. (US 2006/0160976).
Akthakul et al. teach compositions that can form a covering, layer, film, device, and/or prosthetic skin that can be comfortably worn to provide skin barrier function, skin hydration and therapeutic and aesthetic benefits (e.g. abstract), comprising one or more crosslinked polysiloxanes associated with one or more light-filtering compounds (i.e. (c)). (e.g. paragraphs 0070, 0123 and 0124; Claims 1 and 21; Example 81). Akthakul et al. teach that the polysiloxane (i.e. (a)) may have the following structure:
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wherein each R1, R2, and Rt1-Rt6 is independently selected from hydrogen, C1-25 alkyl, C2-25 alkenyl, C2-25 alkynyl, C5-10 aryl, halogen, amino and hydroxy, wherein the C1-25 alkyl, C2-25 alkenyl, C2-25 alkynyl, and C5-10 aryl may be optionally substituted with 1 to 3 substituents selected from C1-25 alkyl, halogen, haloC1-25 alkyl, amino and hydroxy, and wherein n is an integer between 10 and 3000. R1 and R2 of each monomer unit may be, but are not necessarily the same (i.e. may be the elected species (II) when one of R-1 or R2 are H and the remaining R1 or R2 are C1-20 alkyl or C5-10 aryl, and Rt1-Rt6 are CH3). While the elected species is not exemplified, the substituents are included among a short list of preferred ingredients. It would have been obvious to one of ordinary skill in the art at the time of the instant invention to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results.
Akthakul et al. further teach that the polysiloxane may comprise polymethylhydrosiloxanes (i.e. (b)) (e.g. paragraph 0104); a Vinyl Q Resin (i.e. (d)) (e.g. Examples 47 and 65); a catalyst and one or more polymerization inhibitors (platinum divinyltetramethyldisiloxane complex) (i.e. (e) and (f) (e.g. paragraph 0108; Examples). As evidenced in the instant Specification on pages 6 and 40, divinyltetramethyldisiloxane is a polymerization inhibitor.
Akthakul et al. do not teach that the one or more light-filtering compounds is the elected species of octyl methoxycinnamate. This is made up for by the teachings of Berg-Schultz et al.
Berg-Schultz et al. teach novel compounds, useful as sunscreens on the basis of polymethylsiloxanes and compositions containing them (e.g. abstract). Berg-Schultz et al. teach that the sunscreen may be octyl methoxycinnamate (e.g. paragraph 0020, 0044 and Examples). Berg-Schultz et al. teach that the sunscreens are covalently bound to the polysiloxanes (e.g. paragraph 0044, Examples). Berg-Schultz et al. teach that the polysiloxane compounds show an excellent liposolubility and can thus be incorporated in high concentrations into cosmetic formulations leading to a high protection factor of the final compositions. Additionally they are homogeneously distributed in the cosmetic formulation containing at least a fatty phase and a cosmetically accepted organic solvent which leads, applied on the skin/or hair, to the formation of a protective film which protects effectively the skin and/or hair against the deleterious effects of UV-radiation (e.g. paragraph 0092).
Regarding Claims 1, 6-8, 14, 19 and 20, it would have been obvious to one of ordinary skill in the art at the time of filing to select the octyl methoxycinnamate, which is covalently bound to a polysiloxane, of Berg-Schultz et al. for use in the composition and polysiloxanes of Akthakul et al.. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of the compositions are directed to skin protecting compositions comprising polysiloxanes and UV filters, and one would have been motivated to select the polysiloxane-bound UV filters of Berg-Schultz et al. in order to provide the benefits of excellent liposolubility which allows for incorporated in high concentrations into cosmetic formulations leading to a high protection factor of the final compositions, and homogeneous distribution in the cosmetic formulation which leads to the formation of a protective film which protects effectively the skin and/or hair against the deleterious effects of UV-radiation, as taught by Berg-Schultz et al.
Regarding Claim 5, Akthakul et al. teach that the crosslinked polysiloxanes form a network (e.g. paragraphs 0071, 0072).
Regarding Claims 15, 16 and 18, Akthakul et al. teach the inclusion of reinforcing fillers, including fumed silica, hydrated silica, or anhydrous silica (e.g. paragraph 0085).
Response to Arguments
Applicant's arguments filed 5/14/26 have been fully considered but they are not persuasive.
Applicant argues that Akthakul also does not teach or disclose one or more polymerization inhibitors as recited in claim 1 as currently amended.
This is not found persuasive. As described supra, Akthakul teaches the inclusion of a catalyst and one or more polymerization inhibitors (platinum divinyltetramethyldisiloxane complex) (i.e. (e) and (f) (e.g. paragraph 0108; Examples). As evidenced in the instant Specification on pages 6 and 40, divinyltetramethyldisiloxane is a polymerization inhibitor.
Applicant further argues that the inclusion of one or more polymerization inhibitors in the composition recited in claim 1 as currently amended extended working time and improved film quality (defect and bubble free), see FIG. 16; page 6, lines 9-11. Applicant argues that “The inclusion of only 50 mg of inhibitor, however, completely suppressed the cure, allowing the components to be well mixed, applied to the substrates, and drawn down cleanly. Furthermore, the cure was sufficiently slowed allowing any entrained air bubbles time to escape. This, in turn, allowed the film to cure into a perfectly smooth, defect-free film upon drying overnight.”
This is not found persuasive. The claim does not recite an amount of polymerization inhibitor or a specific species thereof, while the data is limited to 50 mg of 1,3-divinyltetramethyldisiloxane. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Accordingly, the rejections are maintained.
Conclusion
No claim is allowed.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619
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