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’ election for the species of: Component A – production Example I ([0053] of specification) and Component B - ceresin, is acknowledged. The election was made with traverse.
The searches for the elected invention rendered results relevant for the non-elected inventions. The Examiner hereby withdraws the election of species requirement in view of a full search of the prior art.
Status of Claims
No claims have been amended, canceled, added or withdrawn.
Claims 1-4 are herein under examination.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 recites “…(A) an organopolysiloxane compound that is represented by the following general formula (1)….[Chemical formula 1]…”. The Examiner suggests using consistent language throughout the claim. In this case, the claim objection could be obviated to amend the phrase to “…(A) an organopolysiloxane compound that is represented by the following
The same scenario occurs in claim 1 with “general formula (2)” and “[Chemical formula 2]”; “general formula (3)” and “[Chemical formula 3]”; and “formula (4)”.
Claim 1 recites “…R4 independently represents an organopolysiloxane group expressed by the following general formula (3) or (4)…
[General formula 3]
MMRDs (3)
MqDsDRtTRu (4)”
For the sake of keeping the language consistent, the Examiner suggests adding “[Chemical formula 3]” before “MqDsDRtTRu (4)”.
Appropriate correction is required.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Gormley et al. (US 2006/0269499; published: 11/30/06), in view of Saito (JP 2014/034522; published: 2/24/14).
The English language machine translation of ‘522 is attached herein. The passages cited below which indicate the teachings of the ‘522 publication are based on its English translation.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
Gormley is directed to substantive silicone emulsions containing a combination of polydimethylsiloxane and pyrrolidone carboxylic acid dimethylsiloxane copolymer, wherein the emulsions are added to personal care compositions for the hair and skin to provide, smoothness, gloss and a conditioning feel to the user (Abstract).
With regards to instant claim 1, Gormley teaches an oil-in-water emulsion composition which comprises: (a) about 60% to about 90% by weight of an oil phase containing a blend of about 5% to about 95% by weight polydimethylsiloxane fluid of Formula I
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wherein each R1 is the same or different and is selected from C1 to C18 alkyl group or phenyl group, with the caveat that R1 is at least 50% methyl groups (reads on the instantly claimed R1), n is an integer from about 10 to about 5000 (reads on the instantly claimed a), about 5% to about 95% by weight of a pyrrolidone carboxylic acid dimethicone copolymer of Formula II
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(reads on instantly claimed R2 wherein R5 is H, X is CH2, m2 is 0, m1 is 0 and m is 2), wherein R is selected from methyl or phenyl (reads on instantly claimed R3); R2, is hydrogen or methyl, m is an integer from 1 to about 20 (reads on instantly claimed b); and n is an integer from about 20 to about 1000(reads on instantly claimed c), and about 0.5% to about 2% by weight of a low HLB emulsifier; and (b) about 10% to about 40% by weight of a water phase containing 0.5% to about 2% by weight of a high HLB emulsifier (See entire reference; e.g., claims).
Examiner’s notes:
It is noted that instantly claimed R4d can be present or not due to the limitation “0≤d≤1.0”.
With regards to the above statement “reads on instantly claimed R2 wherein R5 is H, X is CH2, m2 is 0, m1 is 0 and m is 2”, this does not read on the claimed limitation “provided that when m is 0 and m2 is 1, m1 is 1, that when m is 2 and m2 is 1, m1 is 0 or 1, and that when m is 2 and m2 is 0, m1 is 0”. However, as –(CH2)m and Xm1 can both be methylene groups, and the claimed compound and that taught by Gormley differ by a single methyl group, they are therefore reasonably understood as homologs. "A homologous series is a family of chemically related compounds, the composition of which varies from member to member by CH2". In re Henze, 181 F.2d 196, 200 (CCPA 1950).
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Gormley does not teach the instantly claimed component B or wherein B is, for example, paraffin wax or sucrose fatty acid esters, as required by instant claims 1-3. Although Gormley teaches wherein the abovementioned emulsions are added to personal care compositions for the skin, but do not specifically teach that it is a lip cosmetic, as required by instant claim 4. However, this deficiency is cured by Saito.
Saito is directed to a lip cosmetic composition which is smoothly transferred to an applicator from the beginning of use, leaves less composition in a container after the use, has a good storage stability at high temperature, does not deteriorate glossy finish, prevents the lips from drying and has excellent moisturizing property which lasts for a long period of time (Abstract). The lip cosmetics of Saito include lipsticks, lip balms and gloss [0002]. Saito has discovered that the combination of a solid wax, liquid hydrocarbon oil, polar oil and dextrin fatty acid ester achieves a specific penetration hardness and solves the following problems: the cosmetic to the applicator is not sufficiently removed from the initial use, and it is difficult to take quantitatively, storage stability at high temperature, glossiness of finish, dryness of lips, and reduction of moisture [0005-0006]. Saito teaches a lip cosmetic composition comprising components A, B and C, wherein A is a solid hydrocarbon wax; B is an oily liquid component comprising B1 hydrocarbon oil and B2 polar oil; and C is a dextrin fatty acid ester [0007]. Saito teaches that microcrystalline wax and paraffin wax are preferable from the viewpoints of durability of makeup, maintenance of finish gloss, and high performance of moisture (reads on instant claim 2; [0010]). Saito teaches that dextrin fatty acid ester is used to suppress the crystallization of the solid wax and is excellent in the removal property to the application tool from the initial use and the residual of the cosmetic remaining in the container and improves the storage stability at high temperature (reads on instant claim 3; [0019]).
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Gormley and Saito are both directed to cosmetic compositions for the skin to provide gloss and moisture/conditioning to the skin. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the cosmetic emulsions of Gormley with additional ingredients taught by Saito (e.g., microcrystalline wax or paraffin wax and dextrin fatty acid ester) to achieve the predictable result of obtaining a composition suitable for lip cosmetics (e.g., lipsticks, balms or gloss). One of ordinary skill in the art would have been motivated to do so because Saito teaches these ingredients are advantageous in lip products for the following reasons: (1) microcrystalline or paraffin wax provides durability of makeup, maintenance of finish gloss, and high performance of moisture and (2) dextrin fatty acid ester provides suppression of solid wax crystallization, excellent removal property and improves high temperature storage stability [0010], [0019].
With regards to the abovementioned Examiner’s note #2, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
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 would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GENEVIEVE S ALLEY whose telephone number is (571)270-1111. The examiner can normally be reached Monday-Friday 8:00-5:00.
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/GENEVIEVE S ALLEY/Primary Examiner, Art Unit 1617