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 .
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 4-5, 7-11, and 13-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stark (US Patent No. 7,666,965 B2) in view of Ohata (US Patent No. 4,987,180).
Regarding claim 1, Stark teaches a polymer dispersion of polymers from silicone macromers and ethylenically unsaturated monomers (Abstract), wherein the ethylenically unsaturated monomers include vinyl esters which, in turn, preferably include vinyl acetate (col. 2, lines 34-47). The polymers of Stark therefore include vinyl acetate monomers of at least one repeat unit in succession, and therefore meet the claimed limitation requiring vinyl acetate structures wherein the repeat unit “t” is a number of 1 or more. The polymers are specifically indicated as particles (e.g., col. 7, lines 37-39).
Stark specifically teaches the emulsion polymerization of silicone macromers with organic monomers (col. 2, lines 17-18), including the ethylenically unsaturated monomers described above, col. 2, lines 39-40), which reflects the process contemplated by the instant Application on p. 5, lines 2-10), which specifies that the claimed silicone elastomer particles are produced by reacting a divalent polyorganosiloxane with vinyl acetate, using a radical initiator. The silicone macromers of Stark contain at least one free-radically polymerizable functional group (col. 3, lines 66-67), and thus may be divalent, just as is contemplated by the instant disclosure.
Regarding the limitations requiring that the elastomer particles are obtained by the claimed crosslinking reaction, this limitation is recognized as a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by said steps (see MPEP 2113.I.). In this case, the structure implied by the product-by-process steps of claim 3 includes a polymer particle which contains claimed components “(a)”-“(c).” As described above, Stark teaches polymer particles containing siloxane macromers and vinyl acetate. The siloxane macromers contain at least three organic groups (c.f. col. 4, line 8), and are specifically indicated as optionally including methacryloxy and acryloxy groups (col. 4, lines 40-46). Stark further teaches the incorporation of a radical initiator (e.g., col. 5, lines 12-13). Stark finally teaches the free radical polymerization of the inventive copolymers in an aqueous medium (col. 5, lines 8-10).
Stark teaches the incorporation of a silicone-based macromer (col. 4, lines 7-12), which may include acryloxy/methacryloxy groups (col. 4, lines 40-46). The preferred silicone macromers of Stark are similar to the claimed structure, including a siloxane polymer which may include a polydimethylsiloxane core (c.f. col. 4, lines 27-28, where methyl groups are indicated as the preferred organic group bonded to silicon atoms), and which may have the aforementioned acryloxy/methacryloxy groups as end-groups (c.f. col. 4, line 8, where end groups are designated as R1 groups, and col. 4, lines 40-46 where acryloxy and methacryloxy groups are taught as falling within the scope of R1. The silicone macromer of Stark further contemplates monomer repeat unit numbers which align with the claimed structure (c.f. col. 4, line 12 where the number of repeat units is indicated as ranging from 10 to 1000), but differs from the structure claim 1 because it is silent with regard to the incorporation of non-terminal (meth)acryloxy groups within the polymer.
In the same field of endeavor, Ohata teaches an aqueous emulsion copolymer (Abstract), containing an organopolysiloxane (col. 1, line 53 – col. 2, line 3) and an ethylenically unsaturated monomer which is not an acrylate or methacrylate (col. 2, lines 25-28) which may include vinyl acetate (col. 5, lines 44-48). The organopolysiloxane of Ohata includes two main-chain segments, including one which contains two monovalent hydrocarbon groups, and one which contains a single monovalent hydrocarbon group in addition to a polymerizable monovalent organic group (col. 1, lines 56-65). Ohata exemplifies said polymerizable monovalent organic group with 3-methacryloxypropyl groups (col. 2, lines 58-61), which are the same groups utilized as preferred end groups in the polymer of Stark, as described above. Ohata further indicates that the end groups of the organopolysiloxane may be the same as the polymerizable monovalent organic group (col. 1, lines 65-68). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (See MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to substitute the organopolysiloxane of Ohata into the formulation of Stark, as Ohata teaches said organopolysiloxanes as suitable for copolymerization in siloxane polymers containing vinyl acetate. The polymer of Ohata reads on the claimed component “(a)” because it is identical to the claimed component “(a)” when the end groups of Ohata (indicated as X) are -SiR2R1 groups, wherein R groups are, inter alia, methyl groups, and R1 is a Y group (the polymerizable monovalent organic group as described above, which may preferably be a 3-methacryloxypropyl group).
Regarding claim 2, Stark teaches that the inventive siloxane macromer has a repeat unit of a substantially identical formula as claimed (c.f. col. 4, line 8, wherein the silicone macromer is indicated as having a repeat unit of (SiR2O)-n), wherein the organic groups attached to silicon atoms may include inter alia unsubstituted alkyl groups of at least 1-10 carbons (col. 4, lines 13-28) and wherein n is 10-1000 (col. 4, line 12), which falls within and therefore anticipates the claimed range of “1 to 1000.”
Regarding claim 4, Stark teaches that the acryloxy/methacryloxy groups are suitable examples of R1 within the inventive structure, which are indicated as being attached directly to silicon atoms within the inventive siloxane macromer (c.f. col. 4, lines 40-46 and line 8). Stark specifies, inter alia, a 3-acryloxypropyl group (col. 4, line 46), which is equivalent to the claimed formulation wherein, within the claimed formulation, “R3” is a hydrogen atom and “R2” is an alkylene group having 3 carbon atoms (i.e., a propyl group).
Regarding claim 5, Stark does not directly state the ratio of components as claimed; however, Stark teaches that the inventive particles contain between 5 and 95 wt% of the ethylenically unsaturated monomer, which may be vinyl acetate as described above (col. 2, lines 40-44). Stark further teaches that the silicone component may comprise from 5 to 50 wt% of the composition (col. 4, lines 3-6).
Stark teaches a particular preference for α,ω-di(3-acryloxypropyl)polydimethylsiloxanes as the silicone macromer when copolymerized with vinyl acetate (col. 8, lines 19-20). As described above, Stark teaches that the inventive silicone macromers have a siloxane repeat unit number ranging from 10-1000 (col. 4, line 12). Therefore, the molecular weight range of the preferred α,ω-di(3-acryloxypropyl)polydimethylsiloxanes may range from about 1100 g/mol to about 74,458 g/mol. Given the incorporation of two 3-acryloxypropyl groups in these materials, at about 113 g/mol each, the 3-acryloxypropyl groups in the preferred silicone material of Stark may comprise between about 0.3 and about 20.6 wt% of 3-acryloxypropyl groups.
Given the ranges of vinyl acetate and silicone macromer described above, the ratio of vinyl acetate to 3-acryloxypropyl groups in the preferred polymer of Stark may range from about 0.486 to about 6,333, which encompasses the claimed range, establishing a prima facie case of obviousness.
Regarding claim 7, as described above, Stark teaches the formation of a polymer which is the product of a radical polymerization of vinyl acetate and a divalent siloxane macromer (col. 5, lines 8-10 and col. 2, lines 15-20). Furthermore, as described above, the silicone macromer of Stark may include methacryloxy groups bonded to silicon atoms (col. 4, lines 40-46).
Regarding claims 8 and 21, Stark does not specify the limitations of the inventive particle sizes for the claimed polymers. However, Stark teaches an alternative inventive example wherein the polymer particles are 1153.8 nm in diameter (col. 12, lines 30-33). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to produce copolymers of vinyl acetate and siloxane macromers having a particle size of 1153.8 nm, which falls within the claimed ranges of “0.5 to 20 µm” and “0.5 to 15 µm,” establishing a prima facie case of obviousness.
Regarding claim 9, Stark teaches the formation of a film of the inventive formulation (col. 7, lines 25-27), which reads on the claimed “sheet.” Stark is silent with regard to the claimed hardness characteristics; nevertheless, Stark as applied above results in a film which is substantially identical to the claimed sheet, having all of the same components in all of the same compositional amounts as claimed. Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed hardness characteristic will therefore necessarily be present in Stark, as applied above.
Regarding claim 10, Stark further teaches that the inventive particles can be covered in an anticaking agent such as silica (col. 7, lines 20-31), which reads on the claimed limitation requiring that the particles be at least partially covered with the same.
Regarding claims 11, 14, and 15, Stark is silent with regard to the claimed mesoporous structure, biodegradability, and disintegration characteristics. Nevertheless, Stark as applied above results in a film which is substantially identical to the claimed sheet, having all of the same components in all of the same compositional amounts as claimed, and which is produced by a substantially identical process (i.e., the polymerization method of Stark is highly similar to that which is claimed in the instant Specification, as described in the rejection of claim 1, above). Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, and/or are produced by a substantially identical process, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed mesoporous structure, biodegradability, and disintegration characteristics will therefore necessarily be present in Stark, as applied above.
Regarding claim 13, Ohata further indicates that the inventive polyorganosiloxane may include organosilyl groups (col. 2, lines 54-56), and teaches that the organic groups therein may be the same as variables R, R’, or Y (col. 2, lines 57-58), which may include monovalent hydrocarbon groups of 1-20 carbon atoms (c.f. col. 1, lines 61-63). These organosilyl groups read on the claimed “silalkylene group” because the claim specifies that they are formed from a hydrosilylation reaction involving an alkenyl group, which constitutes an organosilyl group. Furthermore, the claim is recognized as a product-by-process claim which, as described above, is limited by the structure implied by the process steps, and not by the process steps themselves. In this case, the structure implied by the steps in claim 13 include the presence of an organosilyl (i.e., silylalkylene) group.
Regarding claims 16-18, Stark teaches that the inventive particles can be used as additives in compositions or in cosmetic formulations (col. 8, lines 39-41), which reads on the claimed “raw material,” “composition,” and “organic resin additive.”
Regarding claim 19, Stark teaches a resin formed by spray drying a dispersion of the inventive particles (col. 7, lines 12-19).
Regarding claim 20, Stark teaches a process for forming the inventive particles, including charging the silicone macromer and organic monomer to a reactor alongside an initiator to form an emulsion, followed by polymerization to form the inventive particles (e.g., col. 6, lines 36-41 and col. 16, claim 1).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Stark (US Patent No. 7,666,965 B2) in view of Ohata (US Patent No. 4,987,180), and further in view of Souda (WO 2019003897 A1, hereinafter referring to US 2020/0247928 A1 as the English language equivalent).
Regarding claim 12, The term “oil agents” are interpreted as oil-based cosmetic raw materials, as described in [0068] of the instant Specification.
Stark as modified teaches all of the limitations of claim 1, as described above. Stark as modified differs from claim 12 because it is silent with regard to the incorporation of an oil agent. Stark does however specify that the inventive composition is useful for cosmetic formulations such as hair sprays, creams, and shampoos (col. 8, lines 39-41).
In the same field of endeavor, Souda teaches copolymers suitable for cosmetic formulations (Abstract, [0040]), which may be in the form of a dispersion ([0040]), and wherein the copolymer may be diluted with an oil agent ([0045]). Furthermore, Souda specifies hair sprays, creams, and shampoos as example products ([0130]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same use (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art to substitute the copolymer particles of Stark as modified for the copolymer particles within Souda, as Stark recognizes the particles as suitable for cosmetic applications. In doing so, the formulation of Souda and Stark as modified meets the claimed compositional limitations.
Allowable Subject Matter
Claim 22 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 22, Stark and Ohata are silent with regard to the particularly claimed silicone elastomer structure.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed April 7, 2026, with respect to 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. The 35 U.S.C. 102(a)(1) rejection of claims 1-4, 7, 9-11, and 14-20 has been withdrawn.
Applicant's remaining arguments have been fully considered but they are not persuasive.
Applicant argues that the combination of references Ohata and Stark is inappropriate because Stark and Ohata are directed towards different purposes. Firstly, it is not necessary that all of the prior art references are analogous to one another; rather, In order for a reference to be proper for use in an obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed invention (see MPEP 2141.01(a).I.). Furthermore, a reference is analogous to the claimed invention if the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem) (see MPEP 2141.01(a).I.). In this case, both Ohata and Stark are directed towards ethylenically unsaturated polysiloxanes and are therefore plainly relevant to the claimed composition.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues that that the combination of Stark and Ohata is improper because of compositional differences relating to the different problems within the field of endeavor which each document individually contemplates. However, as described above and in the previous office action, both documents are related to silicone polymer dispersions, wherein the silicone polymers comprise ethylenically unsaturated groups, and wherein the compositions include vinyl acetate. Additionally, as described above, Ohata indicates preferred end-groups which overlap those of Stark. Finally, both documents contemplate aqueous dispersions. One having ordinary skill in the art would therefore recognize the considerable similarity between the polymers of Ohata and Stark, and would reasonably recognize their equivalent suitability for vinyl acetate copolymers despite the incorporation of differing, additional components.
Conclusion
THIS ACTION IS MADE FINAL. 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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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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