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
Applicant’s election with traverse of Group I, claims 1-19 in the reply filed on June 17, 2025 is acknowledged. The traversal is on the ground that the claims are so linked together as to form a single general inventive concept. This has been found persuasive. Therefore, the previously presented restriction requirement is withdrawn. Groups I and II have been rejoined and examined on the merits.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 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 1-4, 7, 9-11, and 14-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stark (US Patent No. 7,666,965 B2).
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 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 3, the claim is recognized as a product-by-process claim. 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).
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 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 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 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 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 (i.e., changing from AIA to pre-AIA ) 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, 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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Stark (US Patent No. 7,666,965 B2).
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 8, 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 range of “0.5 to 20 µm,” establishing a prima facie case of obviousness.
Claims 6 and 13 are 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).
Regarding claim 6, Stark teaches all of the limitations of claim 3, as described above. 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 6 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 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.
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 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 teaches all of the limitations of claim 1, as described above. Stark 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 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 meets the claimed compositional limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762