Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Claims 24-38 and 41-47 are currently pending and an amendment to the claims filed 12/16/2025 is acknowledged.
Withdrawn rejections:
Applicant's amendments and arguments filed 12/16/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below are herein withdrawn.
The following rejection and/or objection are either reiterated or newly applied. They constitute the complete set of rejection and/or objection presently being applied to the instant application.
New Grounds of Rejections --- as necessitated by amendment
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 28 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Dependent claim 28 recites “polymerization degree DP being at least 10” which embraces up to 100. However, base claim 24 recites “DP 8-16”. Thus it may not be said claim 28 further limits claim 24 in a proper manner.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
As indicated above, the present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 24, 25, 29-38 and 41-43 are rejected under 35 U.S.C. 103 as being unpatentable over CN 103417388A (IDS of 01/30/2025, citation is obtained from its corresponding US publication no. US2007/0179207A1) in view of US6,239,186B1 (hereinafter, US ‘186).
Applicant claims the below claim 24 filed on 12/16/2025:
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Level of Ordinary Skill in the Art
(MPEP 2141.03)
MPEP 2141.03 (I) states: “The “hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art.” Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). The level of skill is that of a medical/pharmaceutical antimicrobial research scientist, as is the case here, then one can assume comfortably that such an educated artisan will draw conventional ideas from antimicrobial medicine, pharmacy, physiology and chemistry— without being told to do so.
In addition, the prior art itself reflects an appropriate level (MPEP 2141.03(II)).
Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02); and Finding of prima facie obviousness Rational and Motivation (MPEP 2142 – 2143)
US ‘207 discloses high alcohol content foaming compositions with silicone-based surfactants (title); the composition is liquid composition comprising polyether polysiloxane surfactant, foaming stabilizer, one of humectants, emollients, and combinations thereof, water, and C1-4 alcohol (claim 1 of prior art) wherein the surfactant includes silicone-based surfactant, polyether modified polysiloxane, e.g., bis-PEG [10-20] dimethicone that is PDMS backbone of indeterminate length comprising terminal PEO with a number of 10-20 in which “10” touches claimed monomer “10”, Bis-PEG/PPG 18/6 Dimethicone that is PDMS backbone of indeterminate length comprising a terminal PEO polyether with a number average of 18 residues and a terminal PPO polyether with a number average of 6 residues which reads on 6-10 monomers or 6-8 monomers, bis-PEG-[10-20] dimethicone that is PDMS backbone of indeterminate length comprising a terminal PEO polyether with a number average of 10-20 residues that 10 resides touches the claimed “10” monomers in an amount of about 0.01 to about 10.0% ([0023], the Examples and claim 4 of prior art) in which the numbers of PPG or PEG overlap or are within the claimed ranges and also the amount of polyether polysiloxane of prior art overlaps the instant range of at least 0.01%; the alcohol includes ethanol and is present in an amount of about 60-80% (the Examples and claim 5 of prior art) that overlaps the instant range of about 50 to less than 70% (instant claim 24 (in part), claims 25, 41 and 42); and the water is present in a remaining balance to become 100% (the Examples and [0021]) (instant claim 29); the composition is foamable at low pressure and when mixed with air, providing foam (claim 2 of prior art) (instant claim 30); the composition further contains secondary surfactants including other silicone surfactants, fluorosurfactants, alkyl glycosides, poly(ethoxylated and/or propoxylated) alcohols, poly(ethoxylated oxylated and/or propoxylated) esters, derivatives of poly(ethoxylated and/or propoxylated) alcohols, derivatives of poly(ethoxylated and/or propoxylated) esters, alkyl alcohols, enols, esters of polyols, ethers of polyols, esters of polyalkoxylated derivatives of polyols, ethers of polyalkoxylated derivatives of polyols, sorbitol fatty acid esters, sorbose polyalkoxylated derivatives of alcohol fatty acid esters, betaines, sultaines, imidazoline derivatives, amino acid derivatives, lecithins, phospholipids, certain amine oxides and sulfoxides, and mixtures thereof, at about 0.10-5% by weight ([0060]) that is identical to the instant range of between 0.10 to about 5% (instant claim 31); the composition further comprises foam stabilizer such as monoglyceride lactate, cationic emulsifiers, triquaternized stearate phospholipid complex, hydroxystearamidopropyl triamine salt, lactate monoglyceride, food emulsifiers such as glyceryl monostearate, behenyl trimethyl ammonium chloride, cetyl trimethyl ammonium chloride, propylene glycol monostearate, glycols, sodium stearoyl lactylate, silicone wax, encapsulated oil, microencapsulated mineral oil([0067]-[0068]) (instant claims 32-33); the composition further comprises anyone of moisturizers, emollients and combinations in an amount of about 0.05 to about 5.0% that overlaps the instant range of up to about 5% ([0027]) and its example includes lanolin, vinyl alcohol, polyvinyl pyrrolidone and polyols selected from the group consisting of glycerol, propylene glycol, glyceryl oleate and sorbitol, cocoglucoside or a fatty alcohol selected from the group consisting of cetyl alcohol, stearyl alcohol, lauryl alcohol, myristyl alcohol and palmityl alcohol, cetyl alcohol, ceteareth 20, and combinations thereof, present in an amount up to about 5%, and the compositions may include a lipid layer enhancer such as a mixture of alkylglucoside and glyceryl oleate, or PEG-200 hydrogenated glyceryl palmiate, or dihydroxypropyl PEG-5 linoleammonium chloride or PEG-7 glyceryl cocoate ([0070])(instant claim 34); the composition comprises an acid or a base to adjust pH of the composition to a pre-selected pH present in an amount from about 0.05 to about 0.5% weight percent of the total composition that is identical to the claimed range (claim 31 of prior art)(instant claim 35); the composition further comprises preservative in an amount from about 0.01 to about 5% weight percent of the total composition (claim 33 of prior art) that is identical to the claimed range (instant claim 36); the composition further comprises constituents selected from the group consisting of organic gums and colloids, lower alkanolamides of higher fatty acids, short chain diols and/or triols, fragrance, coloring matter, ultraviolet absorbers, solvents, suspending agents, buffers, conditioning agents, antioxidants, bactericides and medicinally active ingredients, and combinations thereof (claim 40 of prior art)(instant claim 37); and the composition is stored in an unpressurized dispenser having a dispenser pump for mixing the composition with air and dispensing foam therefrom (claim 41 of prior art)(instant claim 38). The said amounts of ingredients of US ‘207 are identical and/or overlap the claimed ranges, and in this regard, please see MPEP 2144.05 states that [I]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
However, US ‘207 does not expressly teach PDMSDP of a polysiloxane backbone of the polyether polysiloxane surfactant of instant claims 24, 28 and 43. The deficiencies are cured by US6,239,186B1 (hereinfater US ‘186).
US ‘186 discloses silicone surfactants for the production of open cell polyurethane flexible foams (title); the polyurethane is prepared in the presence of polydimethylsiloxane cell stabilizer composition which is represented by the formula: Me3Si(OSiMe2)nOSiMe3 where n is 5 to 7, provided at least 15 wt % of each of the three molecules in which n is 5, 6 and 7 is present (claim 1 of prior art), and accorindlgy, PDMSs used in flexible polyurethane foams, including high resiliency (HR) foams, generally are a mixture or distribution of straight-chained or branched, fractionated PDMSs with chain lengths DP (DP=n+2, where n is the number of dimethylsiloxane units) ranging from 5 to 20 (bridging paragraph col. 2-3) which overlaps the instant range of 8-16 of instant claim 24, at least 10 of instant claim 28 and 10-12 of instant claim 43.
A person of ordinary skill in the art seeking to achieve a functional composition would want to control polymer chain length to optimize stability and/or performance. Since PDMSDP is a known structural parameter affecting properties, it is routine optimization to select a DP within a known effective range and thus, combining two references provide predictable improvement in performance, e.g., better foam stability without unude experimentation with a resonable expectation of achieveing a functional composition. Further, it would have been obvious to one of ordinary skill in the art to combine the compositon of US’207 with the known silicone-polyether surfactant disclosed in US ‘186 because these surfactants were known foam stabilizer in alcohol systems, and the PDMS chain length ranges taught in US ‘186 (DP 5-20).
Claims 26, 27 and 44-47 are rejected under 35 U.S.C. 103 as being unpatentable over CN 103417388A (IDS of 01/30/2025, citation is obtained from its corresponding US publication no. US2007/0179207A1) in view of US5,981,613B1 (hereinafter, US ‘613).
Applicant claims the below claim 26 filed on 12/16/2025:
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Determination of the scope and content of the prior art (MPEP 2141.01); Ascertainment of the difference between the prior art and the claims (MPEP 2141.02); and Finding of prima facie obviousness Rational and Motivation (MPEP 2142 – 2143)
US ‘207 discloses high alcohol content foaming compositions with silicone-based surfactants (title); the composition is liquid composition comprising polyether polysiloxane surfactant, foaming stabilizer, one of humectants, emollients, and combinations thereof, water, and C1-4 alcohol (claim 1 of prior art) wherein the surfactant includes silicone-based surfactant, polyether modified polysiloxane, e.g., bis-PEG [10-20] dimethicone that is PDMS backbone of indeterminate length comprising terminal PEO with a number of 10-20 that reads on the claimed at least 10 months, Bis-PEG/PPG 18/6 Dimethicone that is PDMS backbone of indeterminate length comprising a terminal PEO polyether with a number average of 18 residues that reads the claimed at least 10 monomers and a terminal PPO polyether with a number average of 6 residues, bis-PEG-[10-20] dimethicone that is PDMS backbone of indeterminate length comprising a terminal PEO polyether with a number average of 10-20 residues that reads on the claimed at least 10 monomers of instant claim 26, 12 monomers of instant claim 28 or 10-18 monomers of instant claim 45, in an amount of about 0.01 to about 10.0% ([0023], the Examples and claim 4 of prior art) in which the numbers of PEG overlap or are within the claimed ranges; the alcohol includes ethanol and is present in an amount of about 60-80% (the Examples and claim 5 of prior art) that overlaps the instant range of about 70 to 90% (instant claim 26 (in part) and 44-46); and the water is present in a remaining balance to become 100% (the Examples and [0021]) (instant claim 26 - water); the composition is foamable at low pressure and when mixed with air, providing foam (claim 2 of prior art); the composition further contains secondary surfactants including other silicone surfactants, fluorosurfactants, alkyl glycosides, poly(ethoxylated and/or propoxylated) alcohols, poly(ethoxylated oxylated and/or propoxylated) esters, derivatives of poly(ethoxylated and/or propoxylated) alcohols, derivatives of poly(ethoxylated and/or propoxylated) esters, alkyl alcohols, enols, esters of polyols, ethers of polyols, esters of polyalkoxylated derivatives of polyols, ethers of polyalkoxylated derivatives of polyols, sorbitol fatty acid esters, sorbose polyalkoxylated derivatives of alcohol fatty acid esters, betaines, sultaines, imidazoline derivatives, amino acid derivatives, lecithins, phospholipids, certain amine oxides and sulfoxides, and mixtures thereof, at about 0.10-5% by weight ([0060]); the composition further comprises foam stabilizer such as monoglyceride lactate, cationic emulsifiers, triquaternized stearate phospholipid complex, hydroxystearamidopropyl triamine salt, lactate monoglyceride, food emulsifiers such as glyceryl monostearate, behenyl trimethyl ammonium chloride, cetyl trimethyl ammonium chloride, propylene glycol monostearate, glycols, sodium stearoyl lactylate, silicone wax, encapsulated oil, microencapsulated mineral oil([0067]-[0068]). For the overlapping amounts, please see MPEP 2144.05 states that [I]n the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
However, US ‘207 does not expressly teach PDMSDP of a polysiloxane backbone of the polyether polysiloxane surfactant of instant claims 26, 27, and 47. The deficiencies are cured by US5,981,613 (hereinfater US ‘613).
US ‘613 disclsoes silicone polyether surfactants (title); a polyether portion in a polyether-polysiloxane surfactant having polylsiloxane (PDMS) backbone and polyether side chains attached to the siloxane and typical structure is MDxD’YM wherein M represents (CH3)2SiO2/2, D’ representes (CH3)RSiO2/3, x+y is from 48 to 220 and the ratio s/y is from 5 to 15 includsive and R is a polyether-containing substituent selected from the group of polyehtylene (PEO) or PEO/PPO chain (see col. 2, lines 4-56); that is, the polyehtyer group is described –(CH2CH2O)n – (C3H6O)m-. Preferrred embodments show PDMS units 44-63 so the PDMSDP is well above 25 in all preferred examples (instant claims 26, 27 and 47 – PDMSDP). MPEP2144.05 noted above.
A person of ordinary skill in the art seeking to optimie performance characteristics (e.g., stablity) would naturally look to US ‘613 for guidance on chain length to improve or tailor the composition of US’2007. Selecting PDMS with a DP or polyether ratio disclosed in US‘613 for controlling moclecular structures directly affects the properties and thus combination of the references would achieve the funcitonal goals of the composition. That is, a person of orindary skill in thte art seeking to optimize the properties, e.g., stability would have been motivated to select the chain lengths from US’613 for use with the alcohol-containing composition of US ‘2007. Such a combination is routine and predictable, with a reasonable expectation of achieving a functional composition.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims 24-38 and 41-47 would have been obvious within the meaning of 35 USC 103.
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant’s arguments have been fully considered, but are not persuasive in view of newly applied US ‘186 and ‘613 references which lead to the predictable results due to different PDMSDP.
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yong (Brian-Yong) S Kwon can be reached at 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYUNG S CHANG/Primary Examiner, Art Unit 1613