DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 22, 2025 has been entered.
Previous Rejections
Applicant’s arguments, filed December 22, 2025, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Status
Claims 1 – 5, 8 – 18, 20, 293, and 294 are pending.
Claims 6, 7, 19, 21 – 292, and 295 are cancelled.
Claim 5 is withdrawn.
Claims 1 - 4, 8 – 18, 20, 293, and 294 are examined here-in.
Claim Interpretation
Applicant’s remarks regarding the unsaturated organopolymer in amended claim 1, wherein the unsaturated organopolymer is in both the first part and the second part (Remarks page 6), is noted. As such, a two-part composition containing the same unsaturated organopolymer in both parts of the composition will be interpreted to read on the claim limitation. In other words, the second part also includes the unsaturated organopolymer (a).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 - 4, 8 – 18, 20, 293, and 294 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Bernard (US 2017/0189317 A1).
Bernard teaches a two-part composition of A and B, wherein both A and B contain at least one vinyl-terminated polysiloxane (abstract, paragraphs 0009, 0011, 0021, 0024).
Bernard teaches part A of the composition contains at least one vinyl-terminated polysiloxane and at least one hydride-functionalized polysiloxane (paragraphs 0009, 0011, 0021). Bernard teaches part B of the composition contains at least one vinyl-terminated polysiloxane, at least one filler, and at least one metal catalyst (paragraphs 0009, 0011, 0021).
Bernard teaches that both part A and B of the composition comprise vinyl-terminated polysiloxanes (paragraph 0021). Bernard teaches the vinyl-terminated polysiloxane may be chosen from many vinyl-terminated polysiloxanes, polymers, and copolymers (paragraph 0030).
Bernard teaches hydride-functionalized polysiloxanes may be chosen from hydride terminated polydimethylsiloxane; polyphenyl-(dimethylhydrosiloxy)siloxane, hydride terminated; methylhydrosiloxane-phenylmethylsiloxane copolymer, hydride terminated; methylhydrosiloxane-dimethylsiloxane copolymers, trimethylsiloxy terminated; polymethylhydrosiloxanes, trimethylsiloxy terminated; polyethylhydrosiloxane, triethylsiloxane, methylhydrosiloxane-phenyloctylmethylsiloxane copolymer; methylhydrosiloxane-phenyloctylmethylsiloxane terpolymer, and combinations thereof (paragraph 0041).
Bernard teaches the composition includes at least one filler (paragraph 0044). Bernard teaches that fillers may be chosen from talc, mica, and silica, among other ingredients (paragraphs 0045 – 0051).
Bernard teaches the composition includes at least one metal catalyst chosen from platinum, rhodium, and tin catalysts (paragraphs 0052 – 0054).
Example 4-1 includes vinyl-terminated PDMS in parts A and B, polydimethyl-methylhydrosiloxane in part A, platinum-divinyltetramethyldisiloxane complex in part B, trisiloxane in parts A and B, and silica silylate in parts A and B, among other ingredients (Table 4A). Example 4-1 anticipates instant claim 1, with vinyl-terminated PDMS reading on the unsaturated organopolymer, polydimethyl-methylhydrosiloxane reading on a hydride functionalized polysiloxane, trisiloxane reading on an environment-responsive agent, platinum-divinyltetramethyldisiloxane complex reading on a transition metal, and silica silylate reading on at least one encapsulating agent. The vinyl-terminated PDMS is in parts A and B of Bernard’s composition, which anticipates the instant claim limitation of an unsaturated organopolymer present in both the first and second parts of a two-part composition.
The functional limitation recited for claim 1, i.e. “the at least one encapsulating agent forms microcapsules between the transition metal and the hydride functionalized polysiloxane” is the result of the combination of an encapsulating agent, a transition metal, and hydride functionalized polysiloxane, as taught by Bernard since it does not appear from the instant disclosure that additional elements are required to cause the functional limitations. Notably, silica silylate is a clay, which is an encapsulating agent listed in paragraph 0011 of the instant specification, platinum-divinyltetramethyldisiloxane complex is listed as a preferred transition metal catalyst in paragraphs 0271 – 0272 of the instant specification, and polydimethyl-methylhydrosiloxane is a hydride-terminated polysiloxane. As such, the combination of silica silylate, platinum-divinyltetramethyldisiloxane complex, and polydimethyl-methylhydrosiloxane would be expected to form microcapsules, as recited in the instant limitation “the at least one encapsulating agent forms microcapsules between the transition metal and the hydride functionalized polysiloxane” of claim 1.
According to MPEP 2112(III) and 2163.07(a), an inherent feature of a composition or method does not need to be explicitly recognized in the prior art for the prior art to be applied. Said differently, “By disclosing in a patent application a device that inherently performs a function or has a property, operates according to a theory or has an advantage, a patent application necessarily discloses that function, theory or advantage, even though it says nothing explicit concerning it” MPEP 2163.07(a).
Since the combination of an encapsulating agent, a transition metal, and hydride functionalized polysiloxane as taught by Bernard appears to overlap with the combination of components, the skilled artisan would have expected that the combination of Bernard would have had the same ability to form microcapsules as that which is instantly claimed. Something which is old (e.g., the combination of Bernard) does not become patentable upon the discovery of a new property (e.g., the ability to form microcapsules), and this feature need not have been recognized at the time of the invention. See MPEP 2112(I) and 2112(II). Therefore, since Bernard’s prior art teachings recite ingredients reading on the claimed combination of ingredients, the functional limitations of claim 1 is anticipated.
The functional limitation recited for claims 2 and 3, i.e. “wherein the environment-responsive agent is capable of transporting out of the two-part composition” appears to be the result of the agent being a volatile agent since it does not appear from the instant disclosure that additional elements are required to cause the functional limitations (paragraph 0006). Therefore, with Bernard’s teaching that trisiloxane is a volatile agent (paragraph 0059), it would be expected that trisiloxane would be “capable of transporting out of the two-part composition” as recited in the instant limitation of claims 2 and 3. According to MPEP 2112(III), an inherent feature of a composition or method does not need to be explicitly recognized in the prior art for the prior art to be applied, therefore, since Bernard teaches trisiloxane as a volatile agent, the functional limitation of claims 2 and 3 is anticipated.
Bernard’s Example 4-1 includes vinyl-terminated PDMS (Table 4A) which is a vinyl functionalized organopolysiloxane, anticipating instant claim 4.
Furthermore, the instant claims 8 – 18 and 20 recite:
“wherein the environment-responsive agent is transported out in a controlled manner”
“wherein the environment-responsive agent is transported out by exposure to radiative transfer of electromagnetic waves”
“wherein the environment-responsive agent is transported out of the composition by convection”
“wherein the environment-responsive agent is transported out by diffusion”
“wherein the environment-responsive agent is transported out by evaporation”
“wherein the environment-responsive agent is transported out by applying pressure”
“wherein the environment-responsive agent is transported out by exposure to a sound, chemical, heat or light”
“wherein the environment-responsive agent is transported out by absorbing the environment-responsive agent into another phase”
“”wherein the environment-responsive agent is transported out by absorbing the environment-responsive agent into the skin of a subject”
“wherein the environment-responsive agent is transported out by absorbing the environment-responsive agent into another ingredient forming a complex”
“wherein the environment-responsive agent is transported out by heating or cooling the composition”
“wherein the environment-responsive agent is transported out by using heat generated with a blow-dry”
The above claim limitations are interpreted as product-by-process limitations because the structure of the composition is unchanged by the process step recited. Even though product-by-process claims are written in terms of being defined by the process, the determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In the instant case, Bernard’s cosmetic composition with volatile agent trisiloxane (Table 4A) reads on the claimed composition with an environment-responsive agent that is capable of transporting out of the composition. As such, the patentability of the instant composition does not depend on its method of production, and the Applicant’s limitation regarding the process transport that the environment-responsive agent undergoes is not patentable, in view of Bernard. See MPEP 2113.
Bernard’s Example 4-1 includes polydimethyl-methylhydrosiloxane which is a hydride terminated polydimethylsiloxane (paragraph 0042, Table 4A), anticipating instant claim 293.
As discussed above, Bernard teaches trisiloxane is a volatile agent that appears to be an environment-responsive agent (paragraphs 0059, Table 4A), reading on instant claim 294.
However, in the event that the previous does not have sufficient specificity to rise to anticipation, claims 1 – 4, 8 – 18, 20, 293, and 294 are also rejected under 35 U.S.C. 103 below.
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.
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 non-obviousness.
Claims 1 - 4, 8 – 18, 20, 293, and 294 are rejected under 35 U.S.C. 103 as being unpatentable over Bernard (as cited above).
For the purposes of this ground of rejection only, and purely arguendo, the examiner will take the position that Bernard does not teach a specific embodiment (i.e., preferred embodiment, working example, etc.) having all of the claimed elements arranged as required by the claim without resorting to some “picking and choosing” within the prior art disclosure. That being said, although Bernard thus would not be anticipatory by this interpretation of the facts, it nevertheless does fairly suggest the claimed invention, as shown below.
Bernard teaches a two-part composition of A and B, wherein both A and B contain at least one vinyl-terminated polysiloxane (abstract, paragraphs 0009, 0011, 0021, 0024).
Bernard teaches part A of the composition contains at least one vinyl-terminated polysiloxane and at least one hydride-functionalized polysiloxane (paragraphs 0009, 0011, 0021). Bernard teaches part B of the composition contains at least one vinyl-terminated polysiloxane, at least one filler, and at least one metal catalyst (paragraphs 0009, 0011, 0021).
Bernard teaches that both part A and B of the composition comprise vinyl-terminated polysiloxanes (paragraph 0021). Bernard teaches the vinyl-terminated polysiloxane may be chosen from many vinyl-terminated polysiloxanes, polymers, and copolymers (paragraph 0030).
Bernard teaches hydride-functionalized polysiloxanes may be chosen from hydride terminated polydimethylsiloxane; polyphenyl-(dimethylhydrosiloxy)siloxane, hydride terminated; methylhydrosiloxane-phenylmethylsiloxane copolymer, hydride terminated; methylhydrosiloxane-dimethylsiloxane copolymers, trimethylsiloxy terminated; polymethylhydrosiloxanes, trimethylsiloxy terminated; polyethylhydrosiloxane, triethylsiloxane, methylhydrosiloxane-phenyloctylmethylsiloxane copolymer; methylhydrosiloxane-phenyloctylmethylsiloxane terpolymer, and combinations thereof (paragraph 0041).
Bernard teaches the composition includes at least one filler (paragraph 0044). Bernard teaches that fillers may be chosen from talc, mica, and silica, among other ingredients (paragraphs 0045 – 0051).
Bernard teaches the composition includes at least one metal catalyst chosen from platinum, rhodium, and tin catalysts (paragraphs 0052 – 0054).
Bernard teaches the composition may include a volatile silicone solvent, such as a trisiloxane (paragraph 0059, Table 4A).
In Example 4-1, vinyl-terminated PDMS is included in parts A and B, however, in the comparative composition vinyl-terminated PDMS is only included in part A (Table 4A). Tables 4B-1 and 4B-2 show that example 4-1 results in decreased appearance of eye bags, under eye wrinkles, crow’s feet, and glabellar lines with regards to the comparative composition (paragraph 0131). These results would motivate a person of ordinary skill in the art to include vinyl-terminated polysiloxane in both the first and second parts of a two-part composition.
Claims 1 – 4, 8 – 18, 20, 293, and 294 are rendered prima facie obvious over the teachings of Bernard, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results. In the instant case, all the claimed elements (e.g., unsaturated organopolymer, hydride functionalized polysiloxane, environment-responsive agent, transition metal, encapsulating agent) were known in the prior art (e.g., cosmetic compositions) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP 2143(i)(a)). As discussed above, Bernard’s Example 4-1 includes each of the claimed ingredients and shows greater reduction of eye bags, under eye wrinkles, crow’s feet, and glabellar lines compared to the comparative composition (Tables 4B-1, 4B-2, paragraph 0131), which would motivate a person of ordinary skill in the art to combine the claimed ingredients and yield a predictable result.
Bernard’s teaching for a two-part composition of A and B, which contains at least one vinyl-terminated polysiloxane, at least one hydride-functionalized polysiloxane, a filler, at least one catalyst, and volatile silicone solvent, such as a trisiloxane (abstract, paragraphs 0009, 0011, 0021, 0024, 0059, Table 4A) reads on instant claim 1.
Bernard’s teaching that both parts A and B contain at least one vinyl-terminated polysiloxane (abstract, paragraphs 0009, 0011, 0021, 0024) reads on the instant limitation for an unsaturated organopolymer in both the first and second parts of the composition as recited in claim 1.
The functional limitation recited for claim 1, i.e. “the at least one encapsulating agent forms microcapsules between the transition metal and the hydride functionalized polysiloxane” is the result of the combination of an encapsulating agent, a transition metal, and hydride functionalized polysiloxane, as taught by Bernard since it does not appear from the instant disclosure that additional elements are required to cause the functional limitations. Notably, silica silylate is a clay, which is an encapsulating agent listed in paragraph 0011 of the instant specification, platinum-divinyltetramethyldisiloxane complex is listed as a preferred transition metal catalyst in paragraphs 0271 – 0272 of the instant specification, and polydimethyl-methylhydrosiloxane is a hydride-terminated polysiloxane. As such, the combination of silica silylate, platinum-divinyltetramethyldisiloxane complex, and polydimethyl-methylhydrosiloxane would be expected to form microcapsules, as recited in the instant limitation “the at least one encapsulating agent forms microcapsules between the transition metal and the hydride functionalized polysiloxane” of claim 1.
According to MPEP 2112(III) and 2163.07(a), an inherent feature of a composition or method does not need to be explicitly recognized in the prior art for the prior art to be applied. Said differently, “By disclosing in a patent application a device that inherently performs a function or has a property, operates according to a theory or has an advantage, a patent application necessarily discloses that function, theory or advantage, even though it says nothing explicit concerning it” MPEP 2163.07(a).
Since the combination of an encapsulating agent, a transition metal, and hydride functionalized polysiloxane as taught by Bernard appears to overlap with the combination of components, the skilled artisan would have expected that the combination of Bernard would have had the same ability to form microcapsules as that which is instantly claimed. Something which is old (e.g., the combination of Bernard) does not become patentable upon the discovery of a new property (e.g., the ability to form microcapsules), and this feature need not have been recognized at the time of the invention. See MPEP 2112(I) and 2112(II). Therefore, since Bernard’s prior art teachings recite ingredients reading on the claimed combination of ingredients, the functional limitations of claim 1 is obvious.
The functional limitation recited for claims 2 and 3, i.e. “wherein the environment-responsive agent is capable of transporting out of the two-part composition” appears to be the result of the agent being a volatile agent since it does not appear from the instant disclosure that additional elements are required to cause the functional limitations (paragraph 0006). Therefore, with Bernard’s teaching that trisiloxane is a volatile agent (paragraph 0059), it would be expected that trisiloxane would be “capable of transporting out of the two-part composition” as recited in the instant limitation of claims 2 and 3. According to MPEP 2112(III), an inherent feature of a composition or method does not need to be explicitly recognized in the prior art for the prior art to be applied, therefore, since Bernard teaches trisiloxane as a volatile agent, the functional limitation of claims 2 and 3 is obvious.
Bernard’s teaching for at least one vinyl-terminated polysiloxane (abstract, paragraphs 0009, 0011, 0021, 0024) reads on instant claim 4.
Furthermore, the instant claims 8 – 18 and 20 recite:
“wherein the environment-responsive agent is transported out in a controlled manner”
“wherein the environment-responsive agent is transported out by exposure to radiative transfer of electromagnetic waves”
“wherein the environment-responsive agent is transported out of the composition by convection”
“wherein the environment-responsive agent is transported out by diffusion”
“wherein the environment-responsive agent is transported out by evaporation”
“wherein the environment-responsive agent is transported out by applying pressure”
“wherein the environment-responsive agent is transported out by exposure to a sound, chemical, heat or light”
“wherein the environment-responsive agent is transported out by absorbing the environment-responsive agent into another phase”
“”wherein the environment-responsive agent is transported out by absorbing the environment-responsive agent into the skin of a subject”
“wherein the environment-responsive agent is transported out by absorbing the environment-responsive agent into another ingredient forming a complex”
“wherein the environment-responsive agent is transported out by heating or cooling the composition”
“wherein the environment-responsive agent is transported out by using heat generated with a blow-dry”
The above claim limitations are interpreted as product-by-process limitations because the structure of the composition is unchanged by the process step recited. Even though product-by-process claims are written in terms of being defined by the process, the determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In the instant case, Bernard’s cosmetic composition with volatile agent trisiloxane (paragraph 0059, Table 4A) reads on the claimed composition with an environment-responsive agent that is capable of transporting out of the composition. As such, the patentability of the instant composition does not depend on its method of production, and the Applicant’s limitation regarding the process transport that the environment-responsive agent undergoes is not patentable, in view of Bernard. See MPEP 2113.
Bernard’s teaching that hydride-functionalized polysiloxanes may be chosen from hydride terminated polydimethylsiloxane; polyphenyl-(dimethylhydrosiloxy)siloxane, hydride terminated; methylhydrosiloxane-phenylmethylsiloxane copolymer, hydride terminated; methylhydrosiloxane-dimethylsiloxane copolymers, trimethylsiloxy terminated; polymethylhydrosiloxanes, trimethylsiloxy terminated; polyethylhydrosiloxane, triethylsiloxane, methylhydrosiloxane-phenyloctylmethylsiloxane copolymer; methylhydrosiloxane-phenyloctylmethylsiloxane terpolymer, and combinations thereof (paragraph 0041) reads on instant claim 293.
As discussed above, Bernard teaches trisiloxane is a volatile agent that appears to be an environment-responsive agent (paragraphs 0059, Table 4A), reading on instant claim 294.
Double Patenting
The judicially created doctrine for non-statutory double patenting rejections has been described in detail in the previous action.
Applicant asserts Terminal Disclaimers have been filed over U.S. Patent No. 10,918,661, 10,973,848, 11,160,827, 12,257,338 and Application No. 17/598,030 (Remarks page 8), however, Terminal Disclaimer documents do not appear to be present in the file. Until the Terminal Disclaimer documents are submitted and approved, the non-statutory double patenting rejections are maintained.
Examiner’s Reply to Attorney Arguments Dated December 22, 2025
Applicant’s arguments with respect to claims 1 – 4, 8 – 18, 20, and 293 – 295 over Yu and Ricard 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.
As noted above, although Applicant asserts Terminal Disclaimers have been filed over U.S. Patent No. 10,918,661, 10,973,848, 11,160,827, 12,257,338 and Application No. 17/598,030 (Remarks page 8), Terminal Disclaimer documents do not appear to be present in the file, therefore the non-statutory double patenting rejections are maintained.
Conclusion
All claims are rejected. No claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612