DETAILED ACTION
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 .
Election/Restrictions
Applicant's election with traverse of Groups I (claims 1-10) in the reply filed on 06/03/2025 is acknowledged. The traversal is on the ground(s) that applicant disagrees with the reasoning provided in the previous office action that said copolymer as instantly claimed does not set forth does not make a contribution over the prior art, JP2000/063225 for the reasons as outlined in the rejection. It is argued the monomer mixture to obtain the copolymer when reacted completely has a high conversion rate (>99%) and the resulting copolymer is soluble in ethanol and has a glass transition temperature, water-resistance and/or sebum repellency suitable for personal care applications. Applicant argues JP200/063225, alone or in combination, fails to disclose this combination of properties or how to achieve they by selecting the monomers and their amounts for the copolymer. Nevertheless, it is deemed the copolymer of claim 1 is known in the art, i.e., the special technical feature (copolymer of claim 1) is found in the prior art, for the reasons set forth below:
Souda et al (WO2019/003892, wherein US11,180,595 is used as English language equivalent) explicitly sets forth a copolymer comprising 10 wt. % acrylic acid; 15 wt. % of methyl methacrylate (corresponding to component i. in claim 1 when R2 is a C1/methyl group); 5 wt. % of butyl acrylate (corresponding to component iv in claim 4); 20 wt. % of ethylhexyl acrylate (corresponding to applicants component ii, wherein R3 is C8); and 50 wt. % of a compound having the formula found in instant claim 8 (corresponding to component iii in claim 1). Souda set forth said copolymers are dissolvable in ethanol—see col. 19, line 4. Souda expresses said copolymers having excellent water resistance and sebum resistance—see abstract.
Applicant has elected the copolymer monomer i, ii, and iii species of i) ethyl acrylate; ii)isobornyl acrylate and iii) 3-( 1,5-bis(2-( 1,1,1,5,5,5 -hexamethyl-3 -((trimethylsilyl)oxy)trisiloxan-3 -yl)ethyl)-3 -(((2- (1,1,1,5,5 ,5-hexamethyl-3-((trimethylsilyl)oxy)trisiloxan-3 -yl)ethyl)dimethylsilyl)oxy)- 1,1,5 ,5-tetramethyltrisiloxan-3-yl)propyl methacrylate. This copolymer species has not been found after a detailed search of the available art; however, as set forth above a copolymer as set forth in the instant claim 1 is found in the prior art. Please find the rejection below.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim(s) 1-2 and 6-10 is/are rejected under 35 U.S.C. 102(a1) as being anticipated by Souda et al (WO2019/003897, wherein US 11,180,595 will be used as the English language equivalent).
Souda sets forth copolymers having carbosiloxane dendrimer structures and acidic groups; compositions comprising the same; and cosmetic compositions—see title.
Said copolymers are obtained by polymerizing a monomer composition comprising: (A) a carbosiloxane dendrimer monomer having a radically polymerizable group; and (B) an unsaturated monomer having at least one acidic group in the molecule; wherein monomer (A) is found in the monomer composition in amounts of equal to or greater than 30 wt. % relative to the total weight of said monomer composition, and the weight ratio of (A)/(B) is from 1.0 to 20.0-see abstract.
Souda sets forth in at least one embodiment the copolymer is obtained from a monomer composition comprising (A) a carbosiloxane dendrimer monomer having a radically polymerizable group; (B) an unsaturated monomer having at least one acidic group in the molecule; and, optionally, a component (C) other polymerizable monomers—see col. 3, line 40; col. 9, lines 43-44; and col. 10, lines 29. The ratio of ([(A)+(B)]/[(A)+(B) +(C)]) of the total content amount of the monomer (A) and the monomer (B) to the monomer composition is preferably not less than 40 wt. %, more preferably not less than 50 wt. %, and even more preferably not less than 55 wt. %--see col.11, lines 27-30. Said copolymer has an acid value of from 5 to 300 mgKOH/g and a molecular weight from 2000 to 200,000, preferably from 300 to 80,000 g/mol. Souda sets forth component (A) is found in amounts from 30 wt. % to less than or equal to 70 wt. %--see col. 9, lines 31-42.
Regarding claims 1, 6-7, 8-9: Souda sets forth a copolymer mixture comprising 20 parts acrylic acid; 10 parts methyl methacrylate; 20 parts lauryl acrylate (claims 6-7); and 50 parts of 3-( 1,5-bis(2-( 1,1,1,5,5,5 -hexamethyl-3 -((trimethylsilyl)oxy)trisiloxan-3 -yl)ethyl)-3 -(((2- (1,1,1,5,5 ,5-hexamethyl-3-((trimethylsilyl)oxy)trisiloxan-3 -yl)ethyl)dimethylsilyl)oxy)- 1,1,5 ,5-tetramethyltrisiloxan-3-yl)propyl methacrylate, having the formula:
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--see example 12, table 2. The methyl methacrylate corresponds to formula i) when R2 is a C1 hydrocarbon group (methyl group); lauryl corresponds to the formula ii) when R1 is methyl and R3 is a C12 hydrocarbon group; and the compound of formula 30 corresponds to formula iii) when X is a methacrylate group and all three R4 groups are -OSi(R5), wherein R5 is –[OSiR2] mOSiR3—see example 12, table 2
Regarding claims 1 and 8-10: Souda explicitly sets forth a copolymer comprising 10 wt. % acrylic acid; 15 wt. % of methyl methacrylate; 5 wt. % of butyl acrylate (claim 10); 20 wt. % of ethylhexyl methacrylate; and 50 wt. % of a carbosiloxane dendrimer having the formula:
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, wherein methyl methacrylate corresponds to formula i) when R2 is a C1 hydrocarbon group (methyl group); ethylhexyl methacrylate corresponds to the formula ii) when R1 is methyl and R3 is a C8 hydrocarbon group; and the compound of formula 30 corresponds to formula iii) when X is a methacrylate group and all three R4 groups are -OSi(R5), wherein R5 is –[OSiR2]mOSiR3, i.e., 3-( 1,5-bis(2-( 1,1,1,5,5,5 -hexamethyl-3 -((trimethylsilyl)oxy)trisiloxan-3 -yl)ethyl)-3 -(((2- (1,1,1,5,5 ,5-hexamethyl-3-((trimethylsilyl)oxy)trisiloxan-3 -yl)ethyl)dimethylsilyl)oxy)- 1,1,5 ,5-tetramethyltrisiloxan-3-yl)propyl methacrylate as found in claims 8-9—see example 15, table 3.
The copolymer monomer mixtures comprises 0 wt. % of compounds having the itaconate ester having the formula found in claim 2.
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.
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Souda et al.
Souda is set forth above as anticipating the composition of claim 1. Souda does not expressly set forth the use of a monomer having the general formula i) where R3 is an alkyl group of 2 or3 carbon atoms or ethyl acrylate. However, Souda sets forth a compound (c) (meth) acrylate monomers, such as methyl (meth) acrylate; ethyl (meth) acrylate; n-propyl (meth) acrylate and others as found in col. 10, line 30 to col. 11, line 2.
Per example 15, Souda sets forth a composition comprising 10 wt. % acrylic acid; 15 wt. % of methyl methacrylate; 5 wt. % of butyl acrylate (claim 10); 20 wt. % of ethylhexyl methacrylate; and 50 wt. % of a carbosiloxane dendrimer having the formula:
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, wherein methyl methacrylate corresponds to formula i) when R2 is a C1 hydrocarbon group (methyl group); ethylhexyl methacrylate corresponds to the formula ii) when R1 is methyl and R3 is a C8 hydrocarbon group; and the compound of formula 30 corresponds to formula iii) when X is a methacrylate group and all three R4 groups are -OSi(R5), wherein R5 is –[OSiR2]mOSiR3, i.e., 3-( 1,5-bis(2-( 1,1,1,5,5,5 -hexamethyl-3 -((trimethylsilyl)oxy)trisiloxan-3 -yl)ethyl)-3 -(((2- (1,1,1,5,5 ,5-hexamethyl-3-((trimethylsilyl)oxy)trisiloxan-3 -yl)ethyl)dimethylsilyl)oxy)- 1,1,5 ,5-tetramethyltrisiloxan-3-yl)propyl methacrylate as found in claims 8-9—see example 15, table 3. It would have been within the skill level of an ordinary artisan using the teachings of Souda to replace the methyl methacrylate and/or butyl acrylate in example 15 with another lower alkyl (meth) acrylate, such as ethyl methacrylate (C2 alkyl) with a reasonable expectation of obtaining a copolymer having the desired properties, such as water resistance and/or sebum resistance in absence of evidence to the contrary and/or unexpected results.
Allowable Subject Matter
Claims 3 are 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.
Souda does not set forth the use of monomers of compound found in claim 3.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
SMc