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 § 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 103, 5-6, and 9-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kikunaga et al., WO 2022/065520. To the extent that it evolved from a National stage application of the aforementioned international disclosure, U.S. Patent Application Publication No. 2023/0331924 is believed to have an identical disclosure and is used as a faithful translation of the WIPO document into the English language. All citation of teaching location will be those for the U.S. publication.
Kikunaga teaches modified polysiloxane compounds with a viscosity conforming with that claimed that have utility as powder treating agents in cosmetic formulations. Applicant is directed to Example 1 where there is disclosed a polymer with an average formula
MD5.2.DR13.2DR21.3DR33.5M
where the ordinary skill will appreciate that M is (CH3)3SiO-, D is (CH3)2SiO, and each of DR1,DR2, and DR3 have 1 methyl group in addition to a group R1, R2, and R3 respectively.
The groups R1 to R3 are defined as follows:
R1 = C2H4Si(OSiMe3)3,
R2 = C3H6X where X is a diglycerin (has two units represented by claimed formula (6),
and R3 is (Me)C16H33.
Simple math can be used to determine that a compound having an average of 5.2 D units, 3.2 DR1 units, 1.3 DR2 units, and 3.5 DR3 units has a molecular weight of approximately 3111.8 (claim 3) and the hexadecyl units contribute about 25.3% of the total (claim 2).
As for claims 9 and 10, the slurry compositions summarized in Table 2 contain substantially more than 2 wt.% of a powder.
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 4, 7, 8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kikunaga et al., WO 2022/065560 in view of Hayashi et al., JP 2013-151657.
Whereas a polysiloxane with C16 substituents is described in Example 1, dodecyl groups are contemplated as alternatives to hexadecyl groups in [0022] and a polymer compositionally similar to the aforementioned exemplified polymer, but where R3 is C12H25 instead would plainly be obvious to a skilled practitioner of the prior art invention.
Concerning claims 7 and 8, UV absorbers are contemplated in [0073] and that same passage states that ones identified in Hayashi (JP ‘657) are suitable in that regard. Applicant is referred to [0110] of the translation where a list of UV absorbers overlapping those which are disclosed in [0061] of the pre-grant publication of this application is outlined. Kikunaga is also not forthcoming as to how much of an oil-soluble UV absorber should be added but, like the instant Specification, it mentions sunscreens, or ultraviolet light blocking products, in [0075]. It is the Examiner’s position that, in the course of optimizing an amount of this component for a sunscreen application, one of ordinary skill would conclude that quantities consistent with that required by claim 8 would be beneficial.
As for claim 11, whereas the powder components are dispersed in a fatty acid ester oil in the formulations summarized in Table 2, [0089] indicates that silicone oils can be used in the alternative and the Examiner takes notice of the fact that the skilled artisan would immediately appreciate that silicone oils with a viscosity consistent with the range stipulated in claim 11 are typical as diluents in sunscreen formulations and suitable for the intended purpose.
The prior art is replete with disclosures of polysiloxanes that contain some combination of higher alkyl groups, oligo/polyglycerol-containing moieties and, organosiloxane side chains. Another reference that teaches most elements of the instant invention, including a comparable viscosity, is Hayashi et al., U.S. Patent Application Publication Serial Number 2014/0371330. Exemplifications P6 and P7 in Table 1 refer to polymers that are similar in nearly every way except there are considerably more than nine dimethylsiloxane repeat units and, thus, the requirement 1 ≤ a ≤ 9 in claim 1 is not satisfied. EP 2103301 describes in Example 6 a compound anticipatory of nearly all aspects of the claimed invention except that the hydrophilic residue containing repeating glycerin units also contains intervening oxyalkylene groups. Paragraph [0004] of this document implies that this is an important design consideration of the prior art invention and, therefore, it would not be obvious to replace these hydrophilic groups with ones adhering to the description of R3 in claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
February 20, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765