DETAILED ACTION
Claim Rejections - 35 USC § 112
Claims 6 to 8 and 14 to 16 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.
This claim states that the rubber particle (A) may (emphasis added) have the
absorption property as claimed but this makes it unclear if it is required to possess these properties or not.
Claim Rejections - 35 USC § 102/103
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 4, 6 to 10, 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sakuta et al. 2008/0311060.
Sakuta et al. teach an organopolysiloxane and a cosmetic composition contain-
ing the same. Paragraphs 18 to 22 teach the organopolysiloxanes that form a silicone rubber particle. This contains a C6-30 hydrocarbon group attached to the siloxane in an amount as claimed (5 to 50 mol%).
Paragraph 52 teaches the presence of water and a surfactant. The amount of water in paragraph 59 is from 1 to 95 wt% which embraces the entire claimed range. The amount of surfactant is found in paragraph 77 and the preferred range is embraced by the claimed range.
In addition to the above, specific attention is directed to paragraph 124 which prepares a crosslinked silicone powder. This powder is in the form of a paste, but this is within the breadth of the claims since claim 1 uses the term “comprising” and allows for the unctuous agent found in paragraph 125.
The silicone rubber particle is formed by crosslinking SiH and Si-vinyl siloxanes. This is the reaction product of a siloxane having SiH groups and C12 carbon groups (from paragraph 19 they will be present in an anticipatory amount), and a divinyl terminated siloxane. This meets the requirement of (A) in claim 1.
Attention is also directed to paragraph 198 which prepares oil in water aqueous dispersion. This contains 25 wt% of composition 44, which is 30 parts of the polymer prepared in Example 2 (noted above, meeting claimed (A)). This results in 7.5 wt% or the silicone rubber particle. This composition contains polyglycerin branched silicones, which are surfactants, in an amount of 1.2 wt%. Finally note that water is present in an amount of 26.8 wt%. This anticipates each claimed component and each amount such that claim 1 is anticipated.
The Examiner notes that these particular examples were referenced for ease of explanation and do not represent the sole anticipatory teachings in Sakuta et al.
For claims 3, 4 and 9 again see the polysiloxane prepared in Example 2 as it meets these requirements. Also again see the range in paragraph 19 of C6-30 carbon atom groups which falls completely within this claimed range.
For claims 6 to 8, as noted supra it is unclear if the silicone rubber particles (A) are required to meet this limitation.
For claims 10, 19 and 20, note that the cream in paragraph 198 is a cosmetic.
Claims 1 to 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Inokuchi et al. 2010/0112023.
Inokuchi et al. teach a composition in which a silicone microparticle having from 5
to 70 mol% of C6-30 alkyl groups attached thereto is present in an emulsion.
See paragraphs 29 though 53 which teach each of the reactants (A-1) and (A-2) found in claims 1 to 4. Paragraph 51 teaches the SiH:alkenyl ratio of claim 2.
For exemplary purposes, specific attention is directed to paragraph 84. This pre-pares a silicone microparticle from 514 grams of siloxane reactant (including formula (3) resulting in the claimed 5 to 70 % C6-30 units), 2 grams of emulsifier and 482 grams of water. These amounts and ingredients anticipate the claimed dispersion.
For claim 5 see the particle diameter in paragraph 84 of 12 micron.
For claims 6 to 8, on one hand note that this does not appear to be necessary requirement for the silicone particles, as noted supra. On the other hand see paragraph 13 which teaches this absorption capability.
For claim 9, note that paragraph 84 independently prepares and handles a dispersion as claimed prior to any surface treatment. This isolated product anticipates this claim as it does not contain an organo silsesquioxane coating at this point.
For claim 10 see paragraph 9 which specifically refers to a cosmetic product.
For claims 11 to 20, note that each of these limitations are addressed supra for claims depending upon claim 1. The anticipation rationale is the same for the claims depending upon claim 2 (or claims 3 or 4). Anticipation holds for these claims as the limitation of claims 2 to 4 are specifically met by Inokuchi et al.
Claims 2, 5 and 11 to 18 are rejected under 35 U.S.C. 103 as being unpatentable over Sakuta et al. in view of Inokuchi et al.
For claim 2, the Examiner notes that Sakuta et al. do not specifically teach the
SiH:alkenyl ratio as claimed.
Inokuchi et al., addressed above and teaching the preparation of silicone micro-particles as a cosmetic additive, teaches in paragraph 51 that such a ratio should be between .5 and 2. This teaching includes the deleterious effects on the microparticle should the ratio be outside this range.
From this one having ordinary skill in the art would have found it obvious to use a ratio within the claimed range, as per the teachings in Inokuchi et al., in an effort to obtain the beneficial properties associated therewith. In this manner claim 2, and the claims that depend thereon, are rendered obvious.
For claim 5, the Examiner notes that Sakuta et al. do not specifically teach the
particle diameter as claimed.
Inokuchi et al., addressed above and teaching the preparation of silicone micro-particles as a cosmetic additive, teaches in paragraph 23 that such a diameter ratio should be between .1 and 100 micron, the same range as claimed. This paragraph includes the deleterious effects on the microparticle should the diameter be outside this range.
From this one having ordinary skill in the art would have found it obvious to use a particle having a diameter within the claimed range, as per the teachings in Inokuchi et al., in an effort to obtain the beneficial properties associated therewith. In this manner claim 5, and the claims that depend thereon, are rendered obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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/MARGARET G MOORE/Primary Examiner, Art Unit 1765