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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. None is anticipatory or meet the amended claims.
Claim Rejections - 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim(s) 5-12 is (are) rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-16 of US 12139585.
‘585 (claims 1-16) meets instant claims 5-12 in an anticipatory manner, because it discloses the claimed method of producing the claimed silicone particles:
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The laundry list case may apply to meet the claimed redox initiator.
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.
Claim(s) 5-12 is(are) rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hagiwara et al. (US 12139585).
Disclosure of Hagiwara is adequately set forth in ¶1 and is incorporated herein by reference.
In light of this, one of ordinary skill would at once envisage selecting the aforementioned redox/radical generator to anticipate claims 5-12, because a genus may be so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. For example, it has been held that a prior art genus containing only 20 compounds and a limited number of variations in the generic chemical formula inherently anticipated a claimed species within the genus because “one skilled in [the] art would... envisage each member ” of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962).
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.
Claim(s) 5-12 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Stark et al. (US 2009014238) in view of Ueyama et al. (US 20090234089) and further in view of Nakano et al. (JP 3623548, machine translation provided).
As to claims 5-12, Stack (abs., claims, examples, Tables) discloses an aqueous suspension or emulsion polymerization method of producing a pre-polymeric silicone particle (1) for cosmetic formulations (48), such as lotion, using 0.05-5 wt% (26-27) of redox initiator (or functionally equivalent oil-soluble initiator), such as t-butyl hydroperoxide/reducing agents, polymerized at 20-100 °C (overlapping with the range of instant claim 1. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.), wherein the particle comprises a silicone macromer (17-22), such as a,w-di(3-methacryloxyproyl) polydimethylsiloxane and functionally equivalent a-di(3-methacryloxyproyl) polydimethylsiloxane. The silicone (18-22) macromer:
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embraces the claimed organnpolysilxoane A of instant claims 5-6 regarding the structure and repeating units. In Ex.b (46) , two a-di(3-methacryloxyproyl) polydimethylsiloxane are copolymerized at 1:1 weight ratio, or both 100 parts, via an oil-soluble initiator.
Particularly to claims 9-12, stack (Ex.3) discloses further polymerizing the pre-polymeric silicone particle of Ex. b with other monomers via aqueous suspension or emulsion and obtaining silicone-comprising particles having volume average size of 0.521 mm.
In light of this, it would have been obvious to one of ordinary skill in the art to have replaced one of the a-di(3-methacryloxyproyl) polydimethylsiloxane with an a,w-di(3-methacryloxyproyl) polydimethylsiloxane embraced in the formula in [0018] and replace the oil-soluble initiator with redox initiator because of their equivalent functionality as primary silicone macromers and initiators. These conditions appear to equally apply to both productions using similar raw materials. This adaptation would have obviously yielded instantly the claimed redox initiator and organnpolysilxoane A.
Furthermore, Nakano (26) discloses cosmetics such as lotion is preferably a hydrophilic cosmetic.
Stark is silent on the claimed organnpolysilxoane B having polyoxyethylene pendant groups.
Solving the same problem of improving hydrophilicity, Ueyama (abs., claims, examples, Tables) discloses a silicone macromer having polyoxyethylene pendant groups that meets the claimed organnpolysilxoane B of instant claims 5 and 7-8:
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and has high hydrophilicity and oxygen permeability (8, 13, 104, Table 1-2), and can be polymerized via radical polymerization owning to the terminal methacrylate groups, as obviously recognized by to one of ordinary skill in the art.
Therefore, as to claims 5-12, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Stack and further replaced one of a-di(3-methacryloxyproyl) polydimethylsiloxane with the aforementioned silicone macromer having polyoxyethylene pendant groups in view of Ueyama, because the resultant process would yield silicone-comprising particles with improved high hydrophilicity and oxygen permeability and having the claimed particle size and monomer components. Furthermore, silicone-comprising particles would be expected to have oxyalkylene group on the particle surface because of the hydrophilicity of Ueyama’s silicone macromer owing to the polyoxyethylene pendant groups and Stack’s aqueous suspension or emulsion polymerization environment through hydrogen bonding, as obviously recognized by one of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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