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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2 and 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Given that formulae (11) through (13) have been deleted from claim 2, there is no longer proper antecedent basis for the mention of the variables h1 to h3.
Concerning claim 13, it is not clear whether “hydrous silica/hydrogen dimethicone-treated titanium oxide” and “hydrous silica/hydrogen dimethicone-treated zinc oxide” reference a mixture of two distinct fillers or, instead, a composite filler where one oxide is coated with the other. Paragraph [0114] doesn’t clarify the matter either insofar as it employs exactly the same characterizing language.
Claim Interpretation
It is presumed for the purpose of evaluating the claims against the prior art that the repeating unit (SiOR12) is intended to refer to a polydiorganosiloxane unit where both groups R are bonded to the silicon atom. Assuming that this is true, than Applicant is strongly encouraged to represent those units as R12SiO2/2. In any case, the formula must be remedied to attach the proper subscript to the oxygen atom.
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 1-3, 6, 9-10, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kikunaga et al., WO 2022/065520 for the reasons cited previously, and in light of the following additional analysis. Claim 14 is unpatentable for the reason that follows.
Whereas the Examiner will agree that the prior art exemplification previously relied upon no longer anticipates the organopolysiloxane as currently defined to the extent that different embodiments of hydrophilic group R3 and hydrophobic organosilicon-based group R4 are now required, the claims are still regarded as being prima facie obvious. Prior art moiety Q in formula (1) at [0020], which is correlated with claimed variable R3, is, in the most preferred embodiments, derived from polyglycerin [0036] where monoallyl ethers of mono-, di-, tri- and tetraglycerin are the four permutations of this most favored permutation of Q. As for L1 of prior art formula (1), which correlates with R4, there are three main permutations including (i) a dendritic siloxane bonded to silicon via a divalent organic residue, (ii) a linear diorganosiloxane chain grafted to the siloxane backbone via an alkylene moiety, or (iii) a linear diorganosiloxane chain grafted to the siloxane backbone via an oxygen atom. Given the rather small number of distinct combinations of Q and L1- that is, the genus of preferred embodiments is relatively small (MPEP 2144.08)- the Examiner asserts that a polysiloxane bearing any combination of the aforementioned variants of Q and L1 would be easily recognizable to a skilled practitioner of the prior art invention. Not only this, but the skilled practitioner has a reasonable expectation of similar properties being maintained when a diglycerin moiety is replaced with a triglycerin moiety and a linear siloxane chain is substituted for an early generation siloxane dendrimer and therefore, this obvious alternative to that which is exemplified in prior art Example 1 will continue to exhibit utility in the same applications. (Applicant observes that at least one property is altered, differing by a matter of degree, when the latter alteration is made and this will be addressed infra.)
As for claim 3, paragraph [0033] at the bottom advocates introducing siloxane chains of fully coincident length to that defined by variable “h” in claim 1 for improved compatibility with convention oils (used in cosmetic compositions). A structurally analogous polymer to that of Example 1 where (i) triglycerin replaces diglycerin and (ii) pendant siloxane chains having a degree of polymerization of up to, say, 5
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replace C2H4Si(OSiMe3)3 will inherently have a molecular weight, approximately 3417 amu, within the range set forth in claim 3. Not only this, but it will have a viscosity within the range set forth at the end of claim 1. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”
As for claim 2, the above molecule comprising pendant oligodimethylsiloxane chains having a DP=5, to reiterate, has a molecular weight of about 3417 amu. The group C16H33 appearing 3.5 times weighs 787.5, or 787.5/3417 = 0.23(100) = 23% and the triglycerol group appearing 1.3 times weights 365.3/3417 = 0.107(100) = 10.7% thus complying with the claimed amounts of R2 and R3 in weight percentage terms.
Regarding new claim 14, the obvious alternative copolymer to that recited in prior art example 1, with the substitutions alluded to above, is one for which b=1.3, c=3.5, a=5.2, and d=3.2 such that the ratio (b + c)/((a + d) = 0.57.
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 for the reasons outlined previously. Claims 12 and 16 are unpatentable for the reasons that follow.
As for claim 12, zinc oxide is contemplated as a suitable filler/pigment in [0063] of Kikunaga. The values of the subscripts correlated with (a) through (d) establish a ratio of 1.3 + 3.5/5.2 + 3.2 = 0.57. consistent with the requirement of claim 14.
Regarding claim 16, paragraph [0019] states that the variable n3, which correlated with d, may be between 0.1 and 10, which of course is encompassing of the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the priorart” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Response to Arguments
That Kikunaga reports an enhancement in the water repellancy imparted by polyorganosiloxane (1) associated with the employment of dendritic permutations of L1 at [0025], as compared to when pendant chains conforming to formulae (2’) and (2”) are present, does not constitute a teaching away. Indeed, the latter two permutations are expressly disclosed as suitable alternatives to the dendimer embodiment. It is also inaccurate to state that the reference fails to disclose a triglycerin alternative given that it clearly is mentioned alongside diglycerin when defining prior art variable R2. What is accurate is that Kikunaga does not exemplify a polysiloxane copolymer containing both the structural attribute (2’) and also pendant triglycerin groups. These shortcomings form the basis for a rejection formulated under 35 USC 103, as opposed to 35 USC 102. Moreover, Applicants’ empirical data is not designed to establish unexpectedly superior results association with either of the aforementioned substitutions insofar as both the inventive- and comparative copolymers are derived from precisely the same precursors.
Allowable Subject Matter
Claim 13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The siloxane polymer that constitutes the prior art invention is, itself, designed to be a treating agent/compatibilizer for fillers/pigments in oils typically used for personal care compositions. Therefore, even if the same fillers as disclosed in claim 13 were mentioned in the reference, it is not clear why they would be treated with a compound (such as hydrogen dimethicone) other than the siloxane polymer that is the focus of the reference.
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.
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.
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September 10, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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