DETAILED ACTION
Previous Rejections
Applicant’s arguments, filed May 14, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 Status
Claim 296 is newly added.
Claims 6, 7, 19, 21 – 292, and 295 are cancelled.
Claims 1 – 5, 8 – 18, 20, 293, 294, and 296 are pending.
Claim 5 is withdrawn.
Claims 1 - 4, 8 – 18, 20, 293, 294, and 296 are examined here-in.
Claim Rejections - 35 USC § 103 (Maintained)
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, 294, and 296 are rejected under 35 U.S.C. 103 as being unpatentable over Bernard (US 2017/0189317 A1, of record).
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, silica, and polyurethane powders 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, 294, and 296 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.
Bernard’s teaching for a two part composition, which may be contained in separate packaging containers until the time of use (paragraphs 0096 – 0097) reads on the recitation of “a first part contained in a first container; and a second part contained in a second container separated from the first container, wherein the first part and the second part are maintained separated from each other until application to the skin” of instant claim 1. Although Bernard’s teaching for part A of the composition contains at least one vinyl-terminated polysiloxane and at least one hydride-functionalized polysiloxane and 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) differs from the instantly claimed first part including an unsaturated organopolymer, a hydride functionalized polysiloxane, an environment-responsive agent, a transition metal, and an encapsulating agent, then a second part containing an unsaturated organopolymer, change in sequence of adding ingredients is prima facie obvious in the absence of new or unexpected results according to MPEP 2144.04(iv)(c).
Said differently, although the metal catalyst and hydride-functionalized polysiloxane of Bernard are initially kept separate, then combined when ready to apply to the skin (paragraphs 0096 – 0097), which differs from the instantly claimed composition in that the instantly claimed hydride-functionalized polysiloxane and transition metal are combined in composition A, then combined with additional ingredients for application to the skin, the final composition for application to the skin (the culmination of the two part composition) contains all of the claimed ingredients. Any order of combining ingredients (i.e. Bernard teaches hydride-functionalized polysiloxane and metal catalyst are kept separately until combined vs. instant application has hydride-functionalized polysiloxane and transition metal together in composition A) is prima facie obvious in the absence of new or unexpected results according to MPEP 2144.04(iv)(c).
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. For at least Example 4-1, which includes silica silylate, platinum-divinyltetramethyldisiloxane, and polydimethyl-methylhydrosiloxane: silica silylate 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 of Bernard’s Example 4-1 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.
Bernard’s teaching to include polyurethane powder in the composition (paragraphs 0045 – 0051) reads on instant claim 296.
Examiner’s Reply to Attorney Arguments Dated May 14, 2026
Applicant argues that in Bernard a transition metal is not contained in the same container as hydride-functionalized polysiloxane and therefore “Bernard does not teach or suggest every subject matter of the amended claim 1” (Remarks page 2). As discussed in the body of the action above, although the metal catalyst and hydride-functionalized polysiloxane of Bernard are initially kept separate, then combined when ready to apply to the skin (paragraphs 0096 – 0097), which differs from the instantly claimed composition in that the instantly claimed hydride-functionalized polysiloxane and transition metal are combined in composition A, then combined with additional ingredients for application to the skin, the final composition for application to the skin (the culmination of the two part composition) contains all of the claimed ingredients. Any order of combining ingredients (i.e. Bernard teaches hydride-functionalized polysiloxane and metal catalyst are kept separately until combined vs. instant application has hydride-functionalized polysiloxane and transition metal together in composition A) is prima facie obvious in the absence of new or unexpected results according to MPEP 2144.04(iv)(c).
For the reasons discussed above, Applicant’s arguments are not persuasive and the 35 U.S.C. 103 rejection of claims 1 - 4, 8 – 18, 20, 293, 294, and 296 over Bernard is maintained.
Terminal Disclaimers
The terminal disclaimers filed on May 14, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 10,918,661, 10,973,848, 11,160,827, 12,257,338 and Application No. 17/598,030 have been reviewed and are accepted. The terminal disclaimer has been recorded.
Conclusion
THIS ACTION IS MADE FINAL. 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 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
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