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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 9/15/2025.
The terminal disclaimers filed on 9/15/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US patent nos. 11,603,473, 11,603,472 and 11,149,150 have been reviewed and are accepted. The terminal disclaimers have been recorded.
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on 9/15/2025. In particular, claims 1, 35, and 45 have been amended to add a specific carrier solvent. Thus, the following action is properly made final.
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.
Claims 1, 2, 8, 30, 31, 32, 35 38, 41, 42, 44, 45, 48, 51, 52, and 54 are rejected under 35 U.S.C. 103 as being unpatentable over Okawa (US 8,013,094).
With respect to claims 1, 35, and 45, Okawa discloses a gelatinous composition comprising an organopolysiloxane having an amine group (reads on claimed functionalized polysiloxane in part b) as gelling agent and a compound selected from a silicone oil and no- or low-polar organic compound, wherein the gelatinous composition has thixotropic rheology (i.e., non-Newtonian properties) (abstract). In the examples (Tables 1 and 2), Okawa includes silicone oil (reads on claimed hydrophobic fluid in part a), hexane (alkane), isododecane (iso-alkane), and isoparaffin. Each of these examples exhibit the same appearance properties.
Okawa does not exemplify or disclose in a single embodiment with sufficient specificity so as to anticipate a mixture of silicone oil (claimed part a) and carrier solvent.
Even so, it is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Lindner 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972). Given that Okawa discloses that either compound is suitable alone, it would have been obvious to one of ordinary skill in the art to utilize a mixture of silicone oil and non-polar hydrocarbon solvents such as hexane, isoparaffin, and isododecane.
Regarding preamble “for forming a conformal coating,” case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. as a conformal coating, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art invention and further that the prior art structure is capable of performing the recited purpose or intended use. Okawa discloses that the gelatinuous composition are used in paste-like items such as car waxes (col. 31, lines 12-24) and therefore capable of being applied to a substrate.
With respect to claims 2, 44, and 54, a car wax like disclosed by Okawa can be readily applied and redistributed after application.
With respect to claims 8, 30, 38, 48, Okawa’s composition does not include conductive material and therefore necessarily provides contaminant resistance and electrical insulating properties because such properties are evidently dependent upon the nature of the composition used.
With respect to claims 31, 32, 41, 42, 51, 52, Okawa teaches that the compound mixed with the gelling is a low- or no-polar compound. Therefore, the composition would be expected to form a hydrophobic, oleophilic, non-polar coating.
Claims 4, 5, 33, 34, 36, 43, 46, and 53 are rejected under 35 U.S.C. 103 as being unpatentable over Okawa (US 8,013,094) in view of US ‘854 (US 8,147,854).
The discussion with respect to Okawa in paragraph 5 above is incorporated here by reference.
With respect to claim 4, Okawa discloses that its gelatinous composition can be used in cosmetic and hair care products (col. 31, lines 15-19) but fails to disclose the addition of solid particles.
US ‘854 (also attributed to Okawa discussed above) discloses cosmetics comprising the same gelling agent (abstract) and the same silicone oil or non- or low-polarity compounds (col. 2, lines 35-38) and teaches adding inorganic powders such as mica, transition metals, inter alia (col. 19, line 49 to col. 20, line 53; col. 24, lines 26-60). These are taught as conventional additives in cosmetic formulations.
Given that both Okawa and US ‘854 discloses the same gelatinous composition for use in cosmetic and further given that US ‘854 teaches that conventional additives include mica and metals, it would have been obvious to one of ordinary skill in the art to select one of these solid particles.
Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
With respect to claim 5, 36, and 46, US ‘854 (also attributed to Okawa discussed above) discloses cosmetics comprising the same gelling agent (abstract) and the same silicone oil or non- or low-polarity compounds (col. 2, lines 35-38) and teaches that surfactant can be added to provide improved detergent activity (col. 17, lines 10-16).
Given that both Okawa and US ‘854 discloses the same gelatinous composition for use in cosmetic and further given that US ‘854 teaches adding surfactant to improve detergent activity, it would have been obvious to one of ordinary skill in the art to a surfactant to Okawa’s gelatinous composition. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
With respect to claims 33, 43, and 53, Okawa discloses using mixtures of silicone oils, low-polarity, and non-polar liquids (abstract) but does not disclose two or more hydrophobic particles.
US ‘854 (also attributed to Okawa discussed above) discloses cosmetics comprising the same gelling agent (abstract) and the same silicone oil or non- or low-polarity compounds (col. 2, lines 35-38) and teaches adding inorganic powders which are advantageously made hydrophobic (col. 20, lines 54-63; col. 24, lines 26-60). US ‘854 also teaches adding solid cross-linked silicone (i.e., hydrophobic particles) (col. 22, lines 53-53-58; col. 23, lines 15-21). These are taught as conventional additives in cosmetic formulations.
Given that both Okawa and US ‘854 discloses the same gelatinous composition for use in cosmetic and further given that US ‘854 teaches that conventional additives include hydrophobized particles and hydrophobic silicone particles, it would have been obvious to one of ordinary skill in the art to select a mixture of at least two hydrophobic particles. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
With respect to claim 34, this claim which further limits hygroscopic material does not exclude the alternative embodiments of claim 5. Because Okawa discloses adding surfactant, it is proper to reject this claim.
Response to Arguments
Applicant's arguments filed 9/15/2025 have been fully considered but they are moot in view of the new grounds of rejection set forth above.
Conclusion
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.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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