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
Applicants elected example 20 in the specification as specific component (A) from the reaction of component 1-7 and component 2-9 with traverse that no burden is required for search all species, it is argued that there is indeed burden to search all species together. Example 20 is free of art. The examination moves to next species component A from structure A1 and structure A-2. Claims 9 and 17-28 read on the elected species and are under examination; claims 10-16 does not read on the elected species and are withdrawn from consideration.
Claims 9-28 are pending, claims 9 and 17-28 are under examination.
Priority
Acknowledge is made that this application is national stage of international patent application PCT/JP2022/002495, filed on 01/25/2022; which claims priority from Japan Patent application JP2021-036091, filed on 03//08/2021.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/11/2023, 01/24/2024, 01/30/2025 and 10/17/2025 is being considered by the examiner.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 9 and 17-28 are rejected under 35 U.S.C. 103 as being unpatentable over Sakuta (US20040234477) in view of Masatomi et al. (US20150164774).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Sakuta teaches a composition useful in cosmetic preparations comprising a crosslinking type organopolysiloxane and an oil other than a silicone oil, and cosmetic preparations containing this composition, are disclosed (abstract). The crosslinking type organopolysiloxane of the composition of this invention is preferably a crosslinking type organopolysiloxane which swells up with at least its own weight of an oil other than a silicone oil. Also, it is preferred that the crosslinking type organopolysiloxane forms a cross-linked structure by reaction of an organopolysiloxane having 1.5 or more vinylic reaction sites in the molecule with an organohydrogenpolysiloxane having on average 1.5 or more hydrogen atoms directly bonded to a silicon atom in the molecule as structural components ([0010]). In this invention, the crosslinking type organopolysiloxane is preferably a crosslinking type organopolysiloxane obtained by the addition polymerization of an organohydrogen polysiloxane expressed by the following formula (1) with an organopolysiloxane expressed by the following formula (2) and/or an unsaturated hydrocarbon expressed by the following formula (3) ([0011]).
(1): organohydrogenpolysiloxane comprising at least one type of structural unit selected from groups comprising a SiO 2 unit, HSiO1.5 unit, RSiO1.5 unit, RHSiO unit, R2SiO unit, R3SiO0.5 unit and R2HSiO0.5 unit (herein, R is a monofunctional hydrocarbon group having 1-30 carbon atoms which may be substituted or unsubstituted, but is not an aliphatic unsaturated group,), and comprising on average 1.5 or more hydrogen atoms bonded to a silicon atom in the molecule ([0012]). (2): organopolysiloxane comprising at least one type of structural unit selected from among a SiO 2 unit, (CH2═CH)SiO1.5 unit, RSiO1.5 unit, R(CH2═CH)SiO unit, R2SiO unit, R3SiO0.5 unit and R2 (CH2═CH)SiO0.5 unit (wherein, R is identical to that of the aforesaid (1)), and comprising on average 1.5 or more vinyl groups bonded to a silicon atom in the molecule ([0013]). Herein, the organopolysiloxane expressed by (1) or (2) is selected so that the total content of at least one of the hydrogen atoms bonded to silicon and the vinyl groups bonded to silicon is less than 20 mol % of the sum of all organic groups and hydrogen atoms bonded to silicon ([0015]). The organohydrogenpolysiloxane of (1) may comprise a SiO 2 unit, HSiO1.5 unit, RSiO1.5 unit, RHSiO unit, R2SiO unit, R3SiO0.5 unit and R2HSiO0.5 unit. R is a monofunctional hydrocarbon group having 1-30 carbon atoms which may be substituted or unsubstituted, but is not an aliphatic unsaturated group. Examples of R are alkyl groups such as methyl, ethyl, propyl, lauryl, myristyl, palmityl and stearyl; aryl groups such as phenyl and tolyl; monofunctional hydrocarbons comprising cycloalkyl groups such as cyclohexyl groups, and substituted hydrocarbon groups wherein one, two or more hydrogen atoms in these monofunctional hydrocarbon groups are substituted by a halogen atom such as chlorine, bromine or fluorine, or a cyano group, e.g., a γ-trifluoropropyl group or chloromethyl group. In particular, it is preferred that 30 mol % or more of R is a methyl group and 5-50 mol % is a hydrocarbon group having 10-22 carbon atoms, but more preferred that the hydrocarbon group having 10-22 carbon atoms accounts for 10-40 mol %. Further, this organohydrogenpolysiloxane expressed by (1) may be straight-chain, branched or cyclic ([0016]). The organohydrogenpolysiloxane expressed by (1) preferably contains on average 1.5 or more, more preferably 2-50 and most preferably 2-10 hydrogen atoms bonded to a silicon atom (Si-H) in the molecule. The proportion of hydrogen atoms bonded to silicon atoms in the molecule is normally 0.5-50 mol %, but more preferably 1-20 mol % relative to the sum of hydrogen atoms and all organic groups bonded to a silicon atom ([0017]). The vinyl group-containing organopolysiloxane expressed by (2) comprises at least one type of structural unit selected from a group comprising a SiO 2 unit, (CH2═CH)SiO1.5 unit, RSiO1.5 unit, R(CH2═CH)SiO unit, R2SiO unit, R3SiO0.5 unit and R2(CH2═CH)SiO0.5 unit (wherein, R is identical to that of the aforesaid (1)). Further, the molecule preferably contains on average 1.5 or more, but more preferably 2-50 vinyl groups bonded to a silicon atom. The average number of vinyl groups bonded to a silicon atom in the molecule is preferably 2-10, but more preferably 2-5. It is preferred that 30 mol % or more of R is a methyl group and 5-50 mol % is a hydrocarbon group having 10-22 carbon atoms, but more preferred that the hydrocarbon group having 10-22 carbon atoms accounts for 10-40 mol % ([0018]). The composition of this invention can easily be obtained by adding the oil other than a silicone oil to the crosslinking type organopolysiloxane obtained by the aforesaid method with stirring ([0032]). The oil includes hydrocarbon oil, ester oil and glyceride oil ([0027-0029]). To the present cosmetic preparation, the ingredients used in general cosmetic preparations, such as an oil-soluble gelling agent, clay mineral modified with organic compounds, resin, ultraviolet absorbent, moisture-holding agent, preservative, antimicrobial agent, perfume, salt, antioxidant, pH regulator, chelating agent, refrigerant, anti-inflammatory agent, skin beautifying component (skin whitener, cell activator, rough dry skin improver, blood circulation promoter, skin astringent or anti-seborrheic agent), vitamin, aminoacid, nucleic acid, hormone, clathrate compound and hair firming agent, can be added so far as they have no adverse influence on the effects of the present invention ([0060]). Example 1 is prepared from the reaction of formula (1) and (2).
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Masatomi et al. teaches A liquid aryl group-containing polyorganosiloxane comprising an arylsiloxy unit represented by RSiO3/2 (wherein R is an aryl group), wherein: the arylsiloxy unit constitutes from 20 to 50 mol % of all the siloxy units constituting the polymer, and an average number of moles of aryl groups per 1 mole of Si atoms in the molecule is within a range of 1.20 to 1.65 (abstract). The composition comprises A liquid aryl group-containing polyorganosiloxane with superior properties ([0017, 0023]), as well as UV absorber ([0085]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Sakuta is that Sakuta do not expressly teach the ratio of aryl groups and silicon atoms is 0.34 or more by mol. This deficiency in Sakuta is cured by the teachings of Masatomi et al.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Sakuta, as suggested by Masatomi et al., and produce the instant invention.
Sakuta teaches crosslinking organopolysiloxane from reaction of formula (1) and (2), which reads on the applicant’s claimed component (A1) and (A2) respectively. Especially from formula (1) and (2) in example 1, formula (2) falls into component (A2), and formula (1) would fall into component (a1) when one or more of methyl group and C10H21 is replaced by aryl (since aryl is alternative to methyl or C10H21). Thus, Sakuta teaches applicant’s claimed (A), but is silent about the ratio of aryl groups and silicon atoms is 0.34 or more by mol.
One of ordinary skill in the art would have been motivated to optimize and adjust to have the ratio of aryl groups and silicon atoms is 0.34 or more because this is optimization under prior art condition or through routing experimentation. MPEP 2144.05. Under guidance from Masatomi et al. teaching the arylsiloxy unit constitutes from 20 to 50 mol % of all the siloxy units constituting aryl group-containing polyorganosiloxane, it is obvious for one of ordinary skill in the art to have the ratio of aryl groups and silicon atoms is 0.34 or more and produce instant claimed invention with reasonable expectation of success.
Regarding claims 18-24, Sakuta teaches hydrocarbon oil, mixed with polyorganosiloxane firstly.
Regarding claims 25-28, Sakuta teaches ultraviolet absorbent.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by the references, especially in the absence of evidence to the contrary.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 9 and 17-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-27 of copending Application No. 18576185 in view of Masatomi et al. (US20150164774). The reference application teaches polyorganosiloxane from (A1) and (A2), in view of Masatomi et al. teaches the ratio of aryl groups and silicon atoms is 0.34 or more, it is obvious to prepare applicant’s claimed invention with reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection.
Claims 9 and 17-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 19129462 in view of Masatomi et al. (US20150164774). The reference application teaches polyorganosiloxane from (A1) and (A2) (claims 3-4), in view of Masatomi et al. teaches the ratio of aryl groups and silicon atoms is 0.34 or more, it is obvious to prepare applicant’s claimed invention with reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claim is allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613