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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 24, 2026 has been entered.
Previous Rejections
Applicant’s arguments, filed February 24, 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 8 has been cancelled.
Claims 16 – 21 are newly added.
Claims 1 – 7 and 9 – 21 are examined here-in.
Warning – Duplicate Claims
Claims 9 and 20 appear to be substantial duplicates.
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Applicant is advised that should claim 9 be found allowable, claim 20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claim 19 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.
Claim 19 recites “a1 and a2 are both independently a number in the range of 0 to 3”, however there is no a2 in the formula shown, therefore it is unclear what the variable is meant to denote.
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 – 7 and 9 – 21 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (US 9,994,680 B2, of record) in view of Kanaya (US 10,130,579 which corresponds to U.S. PGPUB 2017/0035681 A1, of record).
Hayashi teaches a co-modified organopolysiloxane with a siloxane dendron structure and a hydrophilic group that may be an external use preparation (abstract).
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[AltContent: textbox (Hayashi’s co-modified organopolysiloxane of structural formula 1-1-1.)] Hayashi teaches a co-modified organopolysiloxane of structural formula 1-1-1, shown below (column 4 lines 48 – 60).
Hayashi teaches that R1 is a substituted or unsubstituted monovalent hydrocarbon group having between 1 and 30 carbons, or a hydrogen atom; R2 is a substituted or unsubstituted straight or branched monovalent hydrocarbon group having from 6 to 30 carbons; L1 is a silylalkyl group having a siloxane dendron structure expressed by formula 2 when i=1; and Q is a hydrophilic segment (column 3 lines 60 – 67). Hayashi teaches that (n1 + n2 + n3 + n4) is a number between 2 and 80, n1 is a number between 0 and 70, n2 is a number between 0 and 30, n3 is a number between 1 and 20, and n4 is a number between 0.1 and 2 (column 4 lines 61 – 67).
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[AltContent: textbox (Hayashi’s formula 2)]
In formula 2, shown above, R1 is a substituted or unsubstituted monovalent hydrocarbon group having between 1 and 30 carbons, or a hydrogen atom; RC is an alkyl group having between 1 and 6 carbons or a phenyl group; Z is a divalent organic group; I is an integer of 1 to c where c is a number of repetitions of the silylalkyl group between 1 and 10; and a, b, c, and d are 1 ≤ a+b ≤ 2.5, 0.001 ≤ c ≤ 1.5, and 0.001 ≤ d ≤ 1.5 (column 4 lines 11 – 22).
To highlight the overlap between Hayashi’s teachings and the instant claims, each of the variables are compared in Tables 1 and 2 below.
Table 1. Comparing Hayashi’s formula 1 with the instantly claimed structural formula 1
Hayashi’s variable
Hayashi’s definition
Instantly claimed variable
Instantly claimed definition
R1
substituted or unsubstituted monovalent hydrocarbon group having between 1 and 30 carbons, or a hydrogen atom
R1
Substituted or unsubstituted monovalent hydrocarbon group having 1 to 6 carbon atoms, or a hydrogen atom
R2
substituted or unsubstituted straight or branched monovalent hydrocarbon group having from 6 to 30 carbons
R2
Substituted or unsubstituted straight or branched monovalent hydrocarbon group having 6 to 30 carbon atoms
L1
silylalkyl group having a siloxane dendron structure expressed by formula 2
L1
Silylalkyl group having the siloxane dendron structure expressed by formula 2 when i = 1
Q
hydrophilic segment selected from a hydrophilic group that is bonded to the silicon atom via a linking group that is at least divalent, comprising a sugar alcohol represented by structural formulae (3 – 1) and (3 – 2) or a hydrophilic group that is bonded to the silicon atom via a linking group that is at least divalent, comprising at least one hydrophilic unit selected from the hydrophilic units represented by structural formulae (3-3) to (3-6)
(column 3 lines 60 – 67, column 5 lines 29 – 36)
Rc
A carboxyl group-containing organic group expressed by a general formula Rc1-(O-Rc2)p-(O)w-Rc3-COOH
(n1 + n2 + n3 + n4)
2 and 80
(n1 + n2 + n3 + n4)
1 to 1,000
n1
0 and 70
n1
0 to 999
n2
0 and 30
n2
0 to 100
n3
1 and 20
n3
0 to 100
n4
0.1 and 2
n4
0 to 100, if n4 = 0 at least one R’ is Rc
Table 2. Comparing Hayashi’s formula 2 with the instantly claimed structural formula 2
Hayashi’s variable
Hayashi’s definition
Instantly claimed variable
Instantly claimed definition
R1
substituted or unsubstituted monovalent hydrocarbon group having between 1 and 30 carbons, or a hydrogen atom
R1
Substituted or unsubstituted monovalent hydrocarbon group having 1 to 6 carbon atoms, or a hydrogen atom
RC
Alkyl group having 1 to 6 carbons or a phenyl group
RC
An alkyl group with 1 to 6 carbon atoms or a phenyl group
Z
Divalent organic group
Z
Bivalent organic group
a1
0 to 3
aI
0 to 3
a2
0 to 3
This comparison shows that the only variables that do not directly correspond are Hayashi’s Q and the instantly claimed Rc, however, Hayashi’s Q is defined as a hydrophilic segment comprising either a hydrophilic group that is bonded to the silicon atom via a linking group that is at least divalent, comprising a sugar alcohol represented by structural formulae (3 – 1) and (3 – 2) or a hydrophilic group that is bonded to the silicon atom via a linking group that is at least divalent, comprising at least one hydrophilic unit selected from the hydrophilic units represented by structural formulae (3-3) to (3-6) (column 3 lines 60 – 67, column 5 lines 29 – 36). A person of ordinary skill in the art would recognize that a carboxyl group is a hydrophilic group.
However, if Hayashi’s teaching of a hydrophilic group is not sufficient for a person of ordinary skill in the art to select a carboxylic acid, Kanaya teaches a carboxylic acid modified silicone (abstract).
Hayashi does not teach the combination of a carboxylic acid co-modified organopolysiloxane with a basic compound, one or more hydrophilic mediums, and a powder or colorant.
Kanaya teaches the missing elements of Hayashi.
Kanaya teaches a cosmetic material comprising a hydrophobic powder, a carboxylic acid modified silicone, a basic compound, and water (abstract). Kanaya teaches that a cosmetic composition with a carboxylic acid modified silicone, a basic compound, and water has excellent dispersibility and long-term storage (column 4 lines 4 – 9).
Kanaya teaches that the carboxylic acid modified silicone is an organopolysiloxane having at least one carboxylic acid group (column 7 lines 56 – 65). Kanaya teaches that the carboxylic acid modification to the organopolysiloxane is favorable because it enables function as a surfactant or a dispersing agent (column 7 lines 56 – 65, column 13 lines 8 – 15). Furthermore, Kanaya teaches that a long chain alkyl group on the carboxylic acid enhances formulation stability with oily agents (column 8 lines 26 – 31). Kanaya’s teaching that a carboxylic acid modification to the organopolysiloxane leads to enhanced dispersibility and formulation stability would motivate a person of ordinary skill in the art to choose a carboxylic acid for Hayashi’s hydrophilic segment Q. A person of ordinary skill in the art would thus expect a carboxylic acid as hydrophilic segment Q to result in a modified organopolysiloxane compound that has increased dispersion and formulation stability.
Kanaya teaches the hydrophobic powder can be titanium oxide or zinc oxide, among others (column 6 lines 4 – 12, claim 1). Kanaya teaches that hydrophobic fine powder titanium oxide or zinc oxide with particle sizes between 1 to 200 nm are suitable (column 7 lines 33 – 47).
Kana teaches that the cosmetic composition includes water which makes up the aqueous phase of the material (column 12 lines 60 – 63). Kanaya teaches that the cosmetic composition may also include a polyhydric alcohol, which helps to uniformly disperse hydrophobic powder in the aqueous phase and contributes to a moisture retaining feel (column 13 lines 16 – 24).
Kanaya teaches that the basic compound can be any compound that demonstrates basicity when dissolved in water, such as monoethanolamine, triethanolamine, arginine, guanidine, sodium hydroxide, potassium hydroxide, ammonia, and others (column 12 lines 36 – 48).
Kanaya teaches that the cosmetic composition can be in the form of a cream, gel, emulsion, liquid, or as an eye shadow or water phase powder (column 19 lines 40 – 49).
Kanaya teaches that the cosmetic composition is applied to the skin (abstract, column 3 lines 44 – 54, column 4 line 13, column 20 line 4).
The combination of Hayashi and Kanaya’s teachings renders claims 1 – 7 and 9 – 21 prima facie obvious according to MPEP 2143(I)(a) as combining prior art elements to yield predictable results. First, Kanaya’s teaching that a carboxylic acid modification to the organopolysiloxane leads to enhanced dispersibility and formulation stability would motivate a person of ordinary skill in the art to choose a carboxylic acid for Hayashi’s hydrophilic segment Q. A person of ordinary skill in the art would thus expect a carboxylic acid as hydrophilic segment Q to result in a modified organopolysiloxane compound that has increased dispersion and formulation stability. Then, a person of ordinary skill in the art would have been motivated to implement Kanaya’s teachings of a carboxylic acid modified silicone, a basic compound, and water to Hayashi’s teachings of a co-modified organopolysiloxane composition because Kanaya teaches that a cosmetic composition with an carboxylic acid modified silicone, a basic compound, and water has excellent dispersibility and long-term storage (column 4 lines 4 – 9). Said differently, the combination of Hayashi and Kanaya’s teachings regarding dispersion and surface interactions would lead a person of ordinary skill in the art to modify Hayashi’s organopolysiloxane compound to include a carboxylic acid (as taught by Kanaya) as element Q. Therefore, the combination of Hayashi and Kanaya’s teachings is prima facie obvious as combining prior art elements according to known methods to yield predictable results.
Hayashi’s teaching of a co-modified organopolysiloxane (structural formula 1-1-1) in combination with Kanaya’s teaching to modify an organopolysiloxane to include a carboxylic acid group (column 7 lines 56 – 65, column 8 lines 26 – 31) read on instant claim 1.
In detail, Hayashi’s teachings of a compound of structural formula 1-1-1, where L1 is represented in formula 2, and each variable group is defined as described above, reads on instant claim 1 because Hayashi’s R1, R2, L1, Rc, and Z correspond with the instantly claimed R1, R2, L1, Rc, and Z and Hayashi’s Q reads on the instantly claimed Rc because a carboxylic acid group is a hydrophilic group.
Hayashi’s R1 is a substituted or unsubstituted monovalent hydrocarbon group having between 1 and 30 carbons, or a hydrogen atom (column 4 lines 61 – 67). A carboxylic acid is a substituted hydrocarbon group, therefore, R1 in Hayashi’s structural formula 1-1-1 reads on a carboxylic acid co-modified organopolysiloxane (where Rc has a carboxyl group) as described in instant claim 1.
Furthermore, in arguendo, if Hayashi’s teaching of a hydrophilic group is not sufficient for a person of ordinary skill in the art to select a carboxylic acid, Kanaya teaches a carboxylic acid modified silicone (abstract). Kanaya’s teaching that a carboxylic acid modification to the organopolysiloxane leads to enhanced dispersibility and formulation stability (column 7 lines 56 – 65, column 8 lines 26 – 31) would motivate a person of ordinary skill in the art to choose a carboxylic acid for Hayashi’s hydrophilic segment Q. A person of ordinary skill in the art would thus expect a carboxylic acid as hydrophilic segment Q to result in a modified organopolysiloxane compound that has increased dispersion and formulation stability.
Hayashi’s teachings of general formulas 2-1 and 2-2 (column 5, shown below), as components of the structural compound of 1-1-1, read on instant claim 2.
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Hayashi’s teachings for a structural compound of 1-1-1, wherein (n1 + n2 + n3 + n4) is a number between 2 and 80, n1 is a number between 0 and 70, n2 is a number between 0 and 30, n3 is a number between 1 and 20, and n4 is a number between 0.1 and 2 (column 4 lines 61 – 67) overlap on the instantly claimed recitations for (n1+n2+n3+n4) is a number between 2 and 50, n1 is 0 to 49, n2 is 0 to 10, n3 is 1 to 10, and n4 is 0 to 10 as recited in instant claim 3. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(I).
Hayashi’s teachings that for a structural compound of 1-1-1, wherein (n1 + n2 + n3 + n4) is a number between 2 and 80, n1 is a number between 0 and 70, n2 is a number between 0 and 30, n3 is a number between 1 and 20, and n4 is a number between 0.1 and 2 (column 4 lines 61 – 67) also read on instant claim 4, which recites (n1+n2+n3+n4) is a number between 2 and 20, n3 is a number between 1 and 10, n4 is a number between 1 and 10, and (n1 + n2 + n3)/n4 is between 0.1 and 5. For a case where n1 is 0, n2 is 0, n3 is 10, and n4 is 2 the amount of (n1 + n2 + n3)/n4 is equal to 5. Furthermore, Hayashi’s teaching that the co-modified organopolysiloxane has a viscosity of less than 1,500 mPa*s at 25 degrees Celsius (column 3 lines 45 – 46) fulfills the limitation that the instantly claimed compound is a liquid at room temperature. A person of ordinary skill in the art would know that a viscosity of 1,500 mPa*s at 25 degrees Celsius is approximately the viscosity of an oil, which is a liquid.
Kanaya’s teaching for a cosmetic material comprising a hydrophobic powder, a carboxylic acid modified silicone, a basic compound, and water (abstract, column 4 lines 4 – 9), in combination with Hayashi’s teaching that an organopolysiloxane should have a structural formula I-I-I (column 4 lines 48 – 60) reads on instant claim 5.
Hayashi teaches that the co-modified organopolysiloxane may be included in a powder treatment agent or a surface treatment agent (claims 7 and 8). When Rc includes a carboxylic acid (as taught by Kanaya), the co-modified organopolysiloxane is a carboxylic co-modified organopolysiloxane which may be included in a powder or surface treatment agent (claims 7 and 8), reading on instant claims 6 and 7. Further, Kanaya’s teachings that the cosmetic composition can be in the form of an eye shadow or water phase powder (column 19 lines 40 – 49) read on the instantly claimed powder.
Kanaya teaches that the cosmetic composition is applied to the skin (abstract, column 3 lines 44 – 54, column 4 line 13, column 20 line 4).), reading on instant claims 11 and 14 which recites the carboxylic acid co-modified organopolysiloxane is in a topical agent composition. Furthermore, Kanaya’s teaching that the cosmetic composition comprises hydrophobic powder, a carboxylic acid modified silicone, a basic compound, and water (abstract) and is applied to the skin ( abstract, column 3 lines 44 – 54, column 4 line 13, column 20 line 4) reads on instant claim 12.
Kanaya’s teaching that the cosmetic composition can be manufactured by mixing the hydrophobic powder (in the form of an aqueous dispersion), the carboxylic acid modified silicone, a basic compound, and water (column 3 lines 6 – 11, column 18 lines 31 – 38, claims 14 and 15) reads on claim 15 of the instant application.
As described in detail above with regards to instant claims 1 – 4, Hayashi’s teaching of a co-modified organopolysiloxane (structural formula 1-1-1) in combination with Kanaya’s teaching to modify an organopolysiloxane to include a carboxylic acid group (column 7 lines 56 – 65, column 8 lines 26 – 31) also read on the structural requirements for a carboxylic modified organopolysiloxane as recited in instant claim 16. Hayashi’s teachings for a structural compound of 1-1-1, wherein (n1 + n2 + n3 + n4) is a number between 2 and 80, n1 is a number between 0 and 70, n2 is a number between 0 and 30, n3 is a number between 1 and 20, and n4 is a number between 0.1 and 2 (column 4 lines 61 – 67) overlap on the instantly claimed (n1+n2+n3+n4) is a number between 1 and 1000, n1 is 0 to 999, n2 is 0 to 100, n3 is 1 to 100, and n4 is 0 to 100 as recited in instant claim 16. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(I).
Kanaya’s teaching that the cosmetic composition comprising a hydrophobic powder, a carboxylic acid modified silicone, a basic compound, and water (abstract, column 4 lines 4 – 9), in combination with Hayashi’s teaching that an organopolysiloxane should have a structural formula I-I-I (column 4 lines 48 – 60), and with consideration to Kanaya’s teaching that the cosmetic composition can be in the form of a powder (column 19 lines 40 – 49) reads on the remaining limitations of instant claim 16. The preamble’s recitation for “a powder composition” is interpreted to mean that the composition is in the form of a powder. Therefore, the combination of Kanaya and Hayashi’s teachings for each of the components A – D in a composition that is in the form of a powder reads on the instant claim.
Claims 9, 10, 13, and 17 – 21 depend on claim 16.
Kanaya’s teaching that the hydrophobic powder is dispersed in an aqueous phase (abstract, column 13 lines 16 – 24), reads on instant claims 9 and 20.
Kanaya’s teaching that hydrophobic fine powder titanium oxide or zinc oxide with particle sizes between 1 to 200 nm are suitable for inclusion in the composition (column 7 lines 33 – 47) reads on instant claim 10. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(i).
Kanaya’s teaching that the cosmetic composition is applied to the skin (abstract, column 3 lines 44 – 54, column 4 line 13, column 20 line 4), reads on instant claim 13 which recites the powder composition including a carboxylic acid co-modified organopolysiloxane is in a topical agent composition.
Hayashi’s teachings for a structural compound of 1-1-1, wherein (n1 + n2 + n3 + n4) is a number between 2 and 80, n1 is a number between 0 and 70, n2 is a number between 0 and 30, n3 is a number between 1 and 20, and n4 is a number between 0.1 and 2 (column 4 lines 61 – 67) overlap on the instantly claimed n1 is 0 , n2 is 0, and n4 is in the range of 1 to 10 as recited in instant claim 17 and 18. Claimed ranges that overlap with teachings of the prior art are prima facie obvious according to MPEP 2144.05(I).
Hayashi’s teachings of general formula 2-1 (column 5 and shown below), as the L1 component of the structural compound of 1-1-1, reads on instant claim 19.
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The combination of Hayashi’s teaching for an organopolysiloxane compound of structural formula I-I-I that has L1 component of general formula 2-1 (Hayashi columns 4 and 5), where n1 and n2 can both be zero (column 4 lines 61 – 67), with Kanaya’s teaching to include a carboxylic acid group (column 7 lines 56 – 65, column 8 lines 26 – 31), thus motivating a person of ordinary skill in the art to choose a carboxylic acid for Hayashi’s hydrophilic segment Q, reads on instant claim 21. A person of ordinary skill in the art would be motivated to have a long chain alkyl group with the carboxylic acid because Kanaya teaches that a long chain alkyl group on the carboxylic acid enhances formulation stability with oily agents (column 8 lines 26 – 31).
Examiner’s Reply to Attorney Arguments Dated February 24, 2026
Applicant’s arguments have been considered but are moot because the new grounds of rejection specifically addresses the claims as presently amended.
Applicant argues that a person of ordinary skill in the art would not combine the teachings of Hayashi and Kanaya and that the combination of these references would render one or the other inoperable with the following: “for reasons related to the selection of sugar alcohols as the hydrophilic group of Hayashi’s siloxane surfactant”(Remarks page 17); “[Kanaya’s] design philosophy is materially different from Hayashi’s nonionic, HLB-controlled system, which derives hydrophilicity from neutral polyhydric/polyether segments rather than charge” (Remarks page 17); “[modifying the teachings of Hayashi with Kanaya] would alter the very mechanism by which Hayashi achieves emulsification and viscosity control” (Remarks page 18). The Examiner disagrees, because although Hayashi teaches powder-in-oil dispersions and Kanaya teaches powder-in-water dispersions, each reference relies on the scientific principles of dispersion, viscosity, and cohesive forces (Hayashi column 2 lines17 – 21, lines 30 -33, column 3 lines 1 – 8; Kanaya column 1 lines 32 – 36, column 3 lines 40 – 54). Furthermore, Kanaya teaches the inclusion of an oily agent in the aqueous composition, and oil-in-water emulsions (column 3 line 5, column 4 lines 10 - 17), thus illustrating that the combination of oil-based compositions (such as Hayashi’s powder-in-oil composition) with aqueous compositions is doable.
Applicant argues that “one of skill in the art would not have had a reasonable expectation that importing Kanaya’s aqueous, base-driven approach into Hayashi’s oil-oriented powder-treatment context would preserve Hayashi’s intended performance or predictably yield the claimed compositions” (Remarks page 18). The Examiner disagrees, because as discussed with regards to oily agents and oil-in-water emulsions above, Hayashi and Kanaya’s teachings and compositions are not necessarily mutually exclusive: HLB and ionizability are not mutually exclusive; and both concepts are fundamentally underscored by the principles of hydrophobic-hydrophilic and surface interactions.
Double Patenting
The judicially created doctrine for non-statutory double patenting rejections has been described in detail in the previous action.
Briefly, the following non-statutory double patenting rejections are the same as in the previous action with the exception of the rejections regarding U.S. Application No. 17/268,061, which has now been issued as U.S. Patent No. 12,502,345.
Double Patenting over U.S. Patent No. 9,994,680
Claims 1 – 7 and 9 – 21 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 - 16 of U.S. Patent No. 9,994,680.
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[AltContent: textbox (Structural Formula I of the instant application)]Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 1 is drawn to a carboxylic acid co-modified organopolysiloxane of structural formula 1 which is a liquid at 50 °C. Instant claims 5 – 7, 11, 12, and 14 are directed to compositions containing the carboxylic acid co-modified organopolysiloxane. Instant claim 15 is drawn to a method for manufacturing a composition which contains the carboxylic acid co-modified organopolysiloxane. Instant claims 16, 9, 10, 13, and 17 – 21 are drawn to a powder composition comprising a carboxylic co-modified organopolysiloxane of structural formula I, a basic compound, one or more hydrophilic mediums, and a powder or colorant.
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[AltContent: textbox (U.S. Patent No. 9,994,680 co-modified organopolysiloxane of structural formula 1-1-1.)]Conflicting claim 1 is drawn to a co-modified organopolysiloxane expressed in general formula 1-1-1 that has a viscosity in the range of 200 to 1,300 mPa*s at 25 °C.
The instant and conflicting claims differ because instant claim 1 specifies the co-modified organopolysiloxane has a carboxylic acid moiety. Despite this difference, these claims still overlap because the R1 group of conflicting claim 1 can be a substituted hydrocarbon chain, i.e. a hydrocarbon chain with a carboxylic acid moiety.
Conflicting claim 2 overlaps on instant claim 2 with general formulas 2-1 and 2-2.
Conflicting claims 7 – 16 are directed to compositions containing the co-modified organopolysiloxane of structural formula 1-1-1, which reads on instant claims 5 – 7, 9 – 14, and 16 – 21.
Double Patenting over U.S. Patent No. 10,130,579
Claims 1 – 7 and 9 – 21 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 - 19 of U.S. Patent No. 10,130,579.
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[AltContent: textbox (Structural Formula I of the instant application)]Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 1 is drawn to a carboxylic acid co-modified organopolysiloxane of structural formula 1 which is a liquid at 50 °C. Instant claims 5 – 7, 11, 12, and 14 are directed to compositions containing the carboxylic acid co-modified organopolysiloxane. Instant claim 15 is drawn to a method for manufacturing a composition which contains the carboxylic acid co-modified organopolysiloxane. Instant claims 16, 9, 10, 13, and 17 – 21 are drawn to a powder composition comprising a carboxylic co-modified organopolysiloxane of structural formula I, a basic compound, one or more hydrophilic mediums, and a powder or colorant.
Conflicting claim 1 is drawn to a cosmetic comprising a hydrophobic powder, a carboxylic acid modified silicone, a basic compound, and water.
The instant and conflicting claims differ because conflicting claim 1 recites the inclusion of a hydrophobic powder, a basic compound, and water in the cosmetic composition, however the carboxylic acid modified silicone reads on the structural formula I of the instant application. The cosmetic composition of conflicting claims 1 – 13 overlaps on the compositions of instant claims 5 – 7, 9 – 14, and 16 – 21.
Conflicting claims 14 – 19 are drawn to methods for manufacturing a composition which contains the carboxylic acid modified silicone, reading on instant claim 15.
Double Patenting over U.S. Patent No. 12,453,694
Claims 1 – 7 and 9 – 21 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1- 10 of U.S. Patent No. 12,453,694 in view of Hayashi (US 9,994,680, as cited above).
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[AltContent: textbox (Structural Formula I of the instant application)]Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 1 is drawn to a carboxylic acid co-modified organopolysiloxane of structural formula 1 which is a liquid at 50 °C. Instant claims 5 – 7, 11, 12, and 14 are directed to compositions containing the carboxylic acid co-modified organopolysiloxane. Instant claim 15 is drawn to a method for manufacturing a composition which contains the carboxylic acid co-modified organopolysiloxane. Instant claims 16, 9, 10, 13, and 17 – 21 are drawn to a powder composition comprising a carboxylic co-modified organopolysiloxane of structural formula I, a basic compound, one or more hydrophilic mediums, and a powder or colorant.
[AltContent: rect]Conflicting claim 1 is drawn to a cosmetic composition comprising a carboxylic acid modified silicone of formula 1 which is liquid at room temperature, a water-soluble thickening agent, a basic compound, and an inorganic ultraviolet light blocking agent.
The carboxylic acid modified silicone of formula 1 overlaps on the structural formula 1 of the instant application, however, the instant and conflicting claims differ because conflicting claim 1 recites the inclusion of a water-soluble thickening agent, a basic compound, and an inorganic ultraviolet light blocking agent. The instant composition claims include a hydrophobic powder (which reads on water-soluble thickening agent) and a basic compound, but not an inorganic ultraviolet light blocking agent.
Hayashi teaches a cosmetic composition containing a co-modified organopolysiloxane (abstract). Hayashi teaches the co-modified organopolysiloxane gives a composition low viscosity and low HLB, which make handling, working efficiency, and compounding stability superior and thus make the co-modified organopolysiloxane an attractive ingredient for cosmetic compositions (column 26 lines 15 – 25). Hayashi teaches the cosmetic composition can also include inorganic ultraviolet light blocking components, giving the composition superior UV blocking capacity (column 32 lines 44 – 58, column 32 line 66 to column 33 line 7, column 46 lines 27 - 34).
It would be prima facie obvious to the ordinarily skilled artisan to include, within the instant claims, an inorganic ultraviolet light blocking agent as taught by Hayashi in order to give the composition superior UV blocking capacity. It is prima facie obvious according to MPEP 2143(I)(a) as combining prior art elements according to known methods to yield predictable results.
Furthermore, conflicting claims 2 – 10 overlap on the compositions claimed in instant claims 5 – 7, 9 – 14, and 16 – 21.
Double Patenting over U.S. Patent No. 12,502,345
Claims 1 – 7 and 9 – 21 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 – 17 of U.S. Patent No. 12,502,345 in view of Kanaya (US 10,130,579, as cited above).
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[AltContent: textbox (Structural Formula I of the instant application)]Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 1 is drawn to a carboxylic acid co-modified organopolysiloxane of structural formula 1 which is a liquid at 50 °C. Instant claims 5 – 7, 11, 12, and 14 are directed to compositions containing the carboxylic acid co-modified organopolysiloxane. Instant claim 15 is drawn to a method for manufacturing a composition which contains the carboxylic acid co-modified organopolysiloxane. Instant claims 16, 9, 10, 13, and 17 – 21 are drawn to a powder composition comprising a carboxylic co-modified organopolysiloxane of structural formula I, a basic compound, one or more hydrophilic mediums, and a powder or colorant.
[AltContent: rect]Conflicting claim 1 is drawn to a cosmetic composition comprising a carboxylic acid modified silicone of formula 1 which is liquid at 25 °C, and an oil agent.
The carboxylic acid modified silicone of formula 1 overlaps on the structural formula 2 of the instant application, however, the instant and conflicting claims differ because conflicting claim 1 recites the inclusion of an oil agent.
Kanaya teaches a cosmetic composition containing a carboxylic acid modified organopolysiloxane, a hydrophobic powder, a basic compound, and water (abstract). Kanaya teaches the composition can also include an oily phase, explaining that the oily agent will form a hydrophobic film upon deposition to the skin and will act to enhance adhesion of the active compounds (column 2 lines 52 – 55, column 3 lines 4- 5, column 4 lines 10 – 17, claims 8 and 13).
It would be prima facie obvious to the ordinarily skilled artisan to include, within the instant claims, an oily agent as taught by Kanaya. It is prima facie obvious according to MPEP 2143(I)(a) as combining prior art elements according to known methods to yield predictable results.
Furthermore, conflicting claims 1, 3, 5 – 16, and 18 - 20 overlap on the compositions claimed in instant claims 5 – 14.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Double Patenting over U.S. Application 17/268,041
Claims 1 – 7 and 9 – 21 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 3, 4, and 6 - 10 of copending Application No. 17/268,041.
Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 1 is drawn to a carboxylic acid co-modified organopolysiloxane of structural formula 1 which is a liquid at 50 °C. Instant claims 5 – 7, 11, 12, and 14 are directed to compositions containing the carboxylic acid co-modified organopolysiloxane. Instant claim 15 is drawn to a method for manufacturing a composition which contains the carboxylic acid co-modified organopolysiloxane. Instant claims 16, 9, 10, 13, and 17 – 21 are drawn to a powder composition comprising a carboxylic co-modified organopolysiloxane of structural formula I, a basic compound, one or more hydrophilic
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[AltContent: textbox (Structural Formula I of the instant application)]mediums, and a powder or colorant.
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[AltContent: textbox (17/268,041 carboxylic acid modified silicone of formula A)]Conflicting claim 1 is drawn to a composition comprising a carboxylic acid modified silicone of formula A which is liquid at 50 °C, a hydrophobic powder, a basic substance, water, and optionally one or more alcohols.
The instant claim 1 and the conflicting claims differ because conflicting claim 1 recites the inclusion of a hydrophobic powder, a basic substance, water, and optionally one or more alcohols. Although instant claim 1 does not recite the additional ingredients, the carboxylic acid modified silicone of formula A overlaps on the structural formula 1 of the instant application. Furthermore, conflicting claims 1, 3, 4, and 6 - 10 overlap on the compositions claimed in instant claims 5 – 7, 9 – 14, and 16 – 21 which recite the inclusion of a basic compound, one or more hydrophilic mediums, and a powder or colorant.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Double Patenting over U.S. Application 17/601,530
Claims 1 – 7 and 9 – 21 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 3, 5 – 15, and 19, of copending Application No. 17/601,530 (which has been allowed, but not issued as a U.S. Patent) in view of Kanaya (US 10,130,579, as cited above).
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[AltContent: textbox (Structural Formula I of the instant application)]Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 1 is drawn to a carboxylic acid co-modified organopolysiloxane of structural formula 1 which is a liquid at 50 °C Instant claims 5 – 7, 11, 12, and 14 are directed to compositions containing the carboxylic acid co-modified organopolysiloxane. Instant claim 15 is drawn to a method for manufacturing a composition which contains the carboxylic acid co-modified organopolysiloxane. Instant claims 16, 9, 10, 13, and 17 – 21 are drawn to a powder composition comprising a carboxylic co-modified organopolysiloxane of structural formula I, a basic compound, one or more hydrophilic mediums, and a powder or colorant.
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Conflicting claim 1 is drawn to an oil-in-water cosmetic composition comprising a carboxylic acid modified silicone of formula 2 which is liquid at 50 °C, an oil agent, water, and a basic compound.
The instant and conflicting claims differ because conflicting claim 1 recites the inclusion of an oil agent, water, and a basic compound in a cosmetic composition, however, the carboxylic acid modified silicone of formula 2 overlaps on the structural formula 1 of the instant application.
Kanaya teaches a cosmetic composition containing a carboxylic acid modified organopolysiloxane, a hydrophobic powder, a basic compound, and water (abstract). Kanaya teaches the composition can also include an oily phase, explaining that the oily agent will form a hydrophobic film upon deposition to the skin and will act to enhance adhesion of the active compounds (column 2 lines 52 – 55, column 3 lines 4- 5, column 4 lines 10 – 17, claims 8 and 13).
It would be prima facie obvious to the ordinarily skilled artisan to include, within the instant claims, an oily agent as taught by Kanaya. It is prima facie obvious according to MPEP 2143(I)(a) as combining prior art elements according to known methods to yield predictable results.
The inclusion of an oily agent as taught by Kanaya within instant claims 5 – 7, 9 – 14, and 16 – 21, reads on conflicting claims 3, 5 – 15, and 19 in a similar manner.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Double Patenting over U.S. Application 18/027,954
Claims 1 – 7 and 9 – 21 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1 - 11 of copending Application No. 18/027,954.
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[AltContent: textbox (Structural Formula I of the instant application)]Although the claims at issue are not identical, they are not patentably distinct from each other because: instant claim 1 is drawn to a carboxylic acid co-modified organopolysiloxane of structural formula 1 which is a liquid at 50 °C. Instant claims 5 – 14 are directed to compositions containing the carboxylic acid co-modified organopolysiloxane. Instant claim 15 is drawn to a method for manufacturing a composition which contains the carboxylic acid co-modified organopolysiloxane.
Conflicting claim 1 is drawn to a co-modified organopolysiloxane (which nearly matches structural formula I, above) wherein the HLB value is in the range of 0.5 to 2.0.
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[AltContent: textbox (Structural Formula I of 18/027,954)]
The instant and conflicting claims differ because conflicting claim 1 recites the HLB value is within the range of 0.5 to 2.0, however, the co-modified organopolysiloxane overlaps on the structural formula 1 of the instant application. Conflicting claims 2 – 5 recite the general formula and structure for group L1 and Q, overlapping on instant claims 2 – 4. Furthermore, conflicting claims 6 – 11 overlap on the compositions claimed in instant claims 5 – 7, 9 – 14, and 16 – 21.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Examiner’s Reply to Attorney Arguments Dated February 24, 2026
Applicant argues that the double patenting rejections have been overcome with the amendments to instant claims 1 and 16 (Remarks page 19). The Examiner disagrees for the reasons discussed in the body of the rejections above. Furthermore, according to MPEP 804(1), a complete response to a non-statutory double patenting rejection is either a showing that the claims subject to the rejection are patentably distinct from the reference claim or the filing of a terminal disclaimer. The Examiner notes that Applicant’s argument is not a showing that the claims are patentably distinct from the reference claims. As such, the non-statutory double patenting rejections are maintained.
Conclusion
All claims are rejected. No claims are allowed.
Correspondence
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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612