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
Claims 4-14 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 timely traversed the restriction (election) requirement in the reply filed on 12/16/25.
Applicant's election with traverse of Group I in the reply filed on 12/16/25 is acknowledged. The traversal is on the ground(s) that both inventions require the claimed c1/c ratio and that Yoshino (WO2019156146) fails to teach this ratio. This is not found persuasive because the ratio of c1/c is broadly recited as 0.6 or more, which includes a ratio of 1. Yoshino teaches that dimethylpolysiloxane (which has the claimed properties of c1) is the only c component present (p. 4, e.g.) and, thus, anticipates a c1/c ratio of 1 wherein dimethylpolysiloxane is the only component in c (e.g., if the mass of c is 10g and c1 accounts for all 10g of that total, c1/c or 10g/10g would equal 1).
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.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshino (WO2019156146, machine translation).
Claims 1 and 2: Yoshino teaches a method for forming a coating film on skin by electrostatically spraying a composition (Abst.), the composition comprising the following components: (a) a film formable polymer (Abst.; top of p. 3); (b) an alcohol (i.e. claimed volatile substance) (Abst.; middle of p. 3); and (c) a plasticizer, such as dimethylpolysiloxane (Abst.; top through middle third of p. 4). Dimethylpolysiloxane is an oil having a surface tension at 25˚C of 25 mN/m or less and is liquid at 25˚C (see, e.g., applicant’s specification at Table 2 which indicates that dimethylpolysiloxane has the properties of required for c1).
With respect to the claimed c1/c ratio, Yoshino teaches that dimethylpolysiloxane is the only component in c, which would yield a c1/c ratio of 1.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Yoshino in light of Alexander et al. (US 5,996,855).
Claim 3: Yoshino fails to discuss the spray rate in a volume per time context. Alexander teaches an electrostatic spray process and explains that the discharge rate is determined by the amount of material needed per unit time to coat the substrate to its desired thickness (Abst.; 1:50-62). Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a spray rate of 0.12-2 mL/min depending on the desired coating thickness with the predictable expectation of success.
Conclusion
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712