DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction
Applicant’s election without traverse of Group I, claims 1-3, and the species methacryloxypropyl polydimethylsiloxane, butyl methacrylate, 2-ethylhexyl acrylate, and methyl methacrylate copolymer, undecane, and tridecane in the reply filed on 9 December 2025, is acknowledged.
Status of Claims
The amendment to the claims, filed on 9 December 2025, is acknowledged.
Claim 4 has been amended.
Claims 1-7 are pending in the instant Office Action.
Claims 4-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant has amended instant claim 4 so it, and its dependent claims 5-7, depends from claim 1, but claims 4-7 are still drawn to the distinct invention of a method of preparation and the restriction is therefore still required. Election was made without traverse in the reply filed on 9 December 2025.
Claims 1-3 are under consideration in the instant Office Action, to the extent of the following elected species:
the acryl-silicone copolymer is a copolymer of methacryloxypropyl polydimethylsiloxane, butyl methacrylate, 2-ethylhexyl acrylate, and methyl methacrylate; and
the diluent is undecane and tridecane.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of parent Korean Patent Application No. 10-2020-0161404, filed on 26 November 2020, has been received from the International Bureau.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 19 May 2023, and 11 June 2025, were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
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 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.
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Hideyuki Yamaki et al. (Japanese Patent Application Publication No. JP 2018-24591 A, published on 15 February 2018, references to English translation, provided by Applicant in the IDS filed on 19 May 2023, hereafter referred to as H-Y) in view of Rollat et al. (U.S. Patent Application Publication No. US 2003/0017128 A1, published on 23 January 2003, hereafter referred to as Rollat).
H-Y teaches a composition for external application which contains an acrylic silicone graft copolymer and various oily components (Title and Abstract). The composition for external application is taught to be suitable as a skin cosmetic and is therefore interpreted as equivalent to a cosmetic composition as recited in the instant claims (pg. 2, lines 24-29 and claims 6-7). The silicone graft copolymer is taught to contain three units represented by formulas (I), (II), and (III), as well as other units that (pg. 2, lines 32-34 and pg. 3, lines 5-8).
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Formulas (I), (II), and (III) reproduced from H-Y (JP 2018-24591 A).
In one embodiment, the unit of formula (II) is specifically a unit of formula (IIa) in which the end opposite R1 terminates in a methacrylate group, R2 is a C2-10 alkyl group, preferably C2-6 and may be propylene, and R1 is an alkyl group including methyl, which is equivalent to the elected methacryloxypropyl polydimethylsiloxane unit (pg. 2, lines 57-62 and pg. 3, lines 13-14). The additional units in the acrylic silicone-based graft copolymer are taught to be methacrylic acid and alkyl methacrylates (pg. 3, lines 5-8).
H-Y further teaches that the composition comprises one or more oily components in combination with the acrylic silicone-based graft copolymer, which allows the function of the copolymer to be more effective (pg. 3, lines 38-40). In one embodiment, the oily component is a hydrocarbon oil and may be undecane and tridecane (pg. 3, lines 41-51). The content of the acrylic silicone graft copolymer is taught to be 0.1-20% by mass, preferably 1-5% by mass (pg. 3, lines 31-37), and the content of the oily component is taught to be 20-90% by mass (pg. 4, lines 12-14), resulting in a ratio of 1:1 to 900, preferably 1:4 to 90, which significantly overlaps with the range of ratios recited in instant claim 3. Finally, in Examples 4-5, H-Y teaches that the ratio of oily components in the compositions (in Examples 4-5 hydrogenated coconut fatty acid and coconut alkyl) may be ~1:0.2, which falls within the range of ratios recited in instant claim 2.
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the weight ratios of diluents and copolymer: diluents – both instances, the ratios taught by H-Y fall within the range of ratios recited in the instant claims, rendering them prima facie obvious.
H-Y does not teach the alky groups in the alkyl methacrylates to be methyl, butyl, and 2-ethyl hexyl. These deficiencies are offset by the teachings of Rollat.
Rollat teaches a hair styling composition comprising methacrylic copolymers and additional components (Title and Abstract). The methacrylic copolymer is taught to comprise four or more different methacrylate monomers, among which are methacrylate esters with C1-30 branched and strain chain alkyl alcohols such as methyl methacrylate, t-butyl methacrylate, isobutyl methacrylate, and 2-ethylhexyl methacrylate (para. [0021] and claims 1 and 5-6). The composition is additionally taught to comprise one or more other constituents, such as fixing polymers and long chain hydrocarbons (para. [0051-0052]). In one embodiment, the fixing polymer is a grafted silicone polymer containing a silicone polymer, such as polydimethylsiloxanes (PDMS), and a non-silicone organic chain such as t--butyl acrylate, acrylic acid, poly(methacrylate), and poly(alkyl methacrylates) (para. [0150-0156]).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of Rollat with the invention of H-Y to arrive at the invention of instant claims 1-3 because combining prior art elements in similar inventions according to known methods produces predictable results. H-Y teaches a cosmetic composition comprising the diluents undecane and tridecane in amounts that fall within the recited ratio range and an acryl-silicone copolymer that can contain the elected methacryloxypropyl polydimethylsiloxane and the genus alkyl methacrylates. In view of the teachings of Rollat, a person of ordinary skill would be motivated to try using methyl, isobutyl/t-butyl, and 2-ethylhexyl methacrylates because Rollat teaches their use in copolymers in cosmetic compositions and provides missing information an ordinary artisan would need to complete the invention of H-Y. Further, the cosmetic composition taught by Rollat contains long chain hydrocarbons and alkyl methacrylate polymers alongside grafted silicone-acrylate polymers and demonstrates to one of ordinary skill that the components are compatible in cosmetic compositions.
Instant claim 1 is interpreted as a product-by-process claim and these claims are “not limited to the manipulations of the recited steps, only the structure implied by the steps.” See MPEP § 2113.I. "[E]ven though product-by-process claims are limited by and defined by the process, 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 re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Because the product recited in instant claims 1-3 is obvious in view of the teachings above, the limitation in instant claim 1 regarding the process by which the composition is prepared does not render the invention patentable. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1-3 in view of the teachings of H-Y and Rollat.
Conclusion
No claims are allowed.
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/S.J.S./
Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619