DETAILED ACTION
Claims 22, 24-33 are currently pending. Claims 22, 24-25, 27 and 33 are currently under examination.
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 .
Withdrawn Rejections
The prior rejection of claims 22-25 and 28 under 112(b) are withdrawn in view of Applicant’s claim amendments to remove parenthesis and clarify the polymer and functional groups for (A), (B) and (C) and cancelation of claim 23, which Examiner finds persuasive.
The prior rejection of claims 23 and 24 under 112(d) are withdrawn in view of Applicant canceling claim 23 and amendment of claim 24 to clarify the Xa and Ya functional groups.
Examiner’s Note
Applicant's amendments and arguments filed 06/10/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant’s response, filed 06/10/2026, it is noted that claims 22, 24-25 have been amended and claim 33 is newly added. No new matter or claims have been added.
New Objections:
The following objections are newly applied based on Applicant’s claim amendments.
Claim Objections
Claim 22 is objected to because of the following informalities: Claim 22 contains the limitation
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, wherein the use of multiple commas leads to confusion regarding what is the testing parameters and what is the final property obtained. It would be remedial to remove the commas following “diameter” and at “a temperature”. Appropriate correction is required.
Modified Rejection:
The following rejections are modified based on Applicant’s claim amendments.
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 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.
Claim(s) 22, 24-25, 27 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0156148 (IDS dated 11/22/2023) in view of US 2004/0138376 (previously applied).
Regarding claim 22, 24-25 and 33, the ‘148 publication teaches personal care compositions containing pituitous silicone fluids compositions such as cosmetics. The silicone fluid compositions contains certain branched and/or high molecular weight organopoysiloxanes that demonstrate pituitous rheological behaviors and are used in person care formulations (abstract, [0141]) which may be in the form of a gel [0140]. Organopolysiloxane are polymers containing siloxy units where R is typically organo or hydrocarbon group [0011]. The orangopolysiloxane is highly branched organopolysiloane from the reaction of A) an organohydrogensiloxane having at least two SiH containing cyclosiloxane rings, B) a compound of mixture of compounds having at least two aliphatic unsaturated hydrocarbon groups in it molecule and optionally D) a compound or mixture of compounds having mono terminal aliphatic unsaturated hydrocarbon group ([0040]-[0048]). The B) groups may be demonstrated by
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wherein x is 0 to 200 [0086]-[0088], which has an overlapping MW to that claimed. Component D is taught to be a hydrocarbon contain 6-30 carbons having one terminal unsaturated aliphatic group selected from a group including 1-octene [0095]. Wherein D) and B) are taught as reactive with the functional groups of A) in the presence of C) [0119] wherein C) is a hydrosilylation catalyst [0047].
The molar excess maybe expressed as the molar ratio of SiH units to unsaturated group such that the ratio maybe from 2/1 to 8/1 [0067], reading on a ratio of B to A of 0.5. The amount of D used in the hydrosilylation reaction may vary providing the molar qualities of the total aliphatic unsaturated groups present in the reaction form component B) and D) is such that the molar ratio of the SiH units of component A) to the aliphatic unsaturated groups of B) and D) ranges from 10/1 to 1/10 [0120]. The specific ratio of C to A is not taught, however is taught to be an optimizable parameter. As MPEP 2144.05 recites “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine optimization”.
Regarding the limitation of the fluid branched polymer is capable of generating, wherein rotated between two flat plates 1mm apart and with a 50 mm diameter for shear rates between 0.1-1000 s-1 at a temperature of 20 degree C, a maximum normal force of at least 6N corresponding to a maximum normal pressure of 3000 pa is met by the ‘148 publication teaching the D component siloxy units and sufficient molecular weight to impart pituitous behavior to the silicone compositions [0013] wherein shear rate results in normal force below the 3,000 Pa claimed rate (Figures 1 and 5), thus teaching the polymer of the ‘148 publication falling within the maximum normal pressure claimed and is an optimizable parameter. It is noted that between 0.1-1000 s-1 is interpreted to require the Max Normal Force at a single point within the shear rates, not required over the full range.
As MPEP 2144.05 recites “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine optimization”. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent Applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and Applicant’s own disclose supports the suitability of the prior composition as the inventive composition component, the burden is property shifted to Applicant to show otherwise.
Regarding claim 27, the limitation of the composition being a foundation is met by the ‘148 publication teaching the composition being a foundation [0141].
The ’148 publication does not teach the specific structure of A) (claim 22)
The ‘376 publication teaches polyorganohydroxysiloxane having a molecular weight of about 3500 to about 4000 and 6-7 Si-H bonds per molecule with a lower alkylene terminated polydimethylsiloxane having molecular weight of about 20,000 to about 2500. The gel is taught to have 65% to about 99.9% of the composition and used in cosmetic materials (abstract). The polyorganohydrosiloxane is taught to have the formula II:
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wherein the molecular weight is 3500 and the alkyl is 1-3 carbon atoms ([0022]-[0023]). The SiH groups are taught as reactive with the unsaturated bonds [0024]. Examples include polydimethylsiloxane terminated with ethylene groups reacted with polymethylhydrodimethylpolysiloxane [0039]. The cosmetic is taught to be applied topically [0027].
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use the polyorganohydroxysiloxane as taught by the ‘376 publication for the A) organohydrogen siloxane taught by the ‘148 publication because the ‘148 publication and the ‘376 publication are both directed to polyorganohydroxysiloxane which are used in cosmetic formulations. One of ordinary skill in the art before the filing date of the claimed invention would have a reasonable expectation of success as the polyorganohydroxysiloxane in the ‘376 publication and the ’148 publication are both react with unsaturated bonds on a polydimethylsiloxane containing ethylene groups and used in a cosmetic composition. One of ordinary skill in the art would be motivated to use the polyorganohydroxysiloxane of the ‘376 publication in the composition of the ‘148 publication because the ‘148 publication teaches the use of polyorganohydroxysiloxane which may be linear and obtain the desired viscosity of the composition and the final form of a gel is desired and the ‘376 publication teaches polyorganohydroxysiloxane wherein gel composition is obtained for use in a cosmetic composition. It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use the specifically named polyorganohydroxysiloxane of the ‘376 publication for the polyorganohydroxysiloxane in the ’148 publication and obtain the desired gel cosmetic composition.
Response to Arguments:
Applicant’s arguments have been fully considered and is not deemed to be persuasive.
Applicant argues the ‘148 publication (Shikano) the gum is prepared with only two ingredients polyorganosiloxane having at least one hydroxyl group capable of undergoing condensation polymerization (a’) and ii) an alkoxy silane of the formula R’Si(OR4)3 or Si(OR4)3 (b’). The alpha olefin (c) is absent (c’) in the reference.
In response, Component D is taught to be a hydrocarbon contain 6-30 carbons having one terminal unsaturated aliphatic group selected from a group including 1-octene [0095], which includes a vinyl group, meeting the limitation of (C).
Applicant argues the ‘148 publication the amount a (a’) and (b’) in the reaction is provided in a molar ratio of vinyl to SiH of 0.9/1 to 1.2/1” [0131]. Thus the molar ratio is of b to a is .9/1 to 1.2/1 falls outside the scope of the molar ratio of the functional groups Yb to Xa claimed.
In response, “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).” (see MPEP 2123). Further, “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).” (see MPEP 2141.02). The molar excess maybe expressed as the molar ratio of SiH units to unsaturated group such that the ratio maybe from 2/1 to 8/1 [0067], reading on a ratio of B to A of 0.5. The SiH (2) to unsaturated (1), leads to a ratio of 1 (vinyl)/2(SiH) or .5, which falls within the claimed ratio.
Applicant argues the molar ratio of the reactive functional groups in the molecule or linear oligomer (C)(Yc) to the reactive functional groups in the linear polymer (A) (Xa) is between 0.5 and 1.2. However, the ‘148 publication does not teach a molar ratio relating to component c’, the reference only mentions the use of alpha olefins as component c’ in Example 4. Example 4 also uses a tetramethylcyclotetrasiloxane [0180]. The amount of the component c’ in example 4 is determined by the residual SiH remaining after the reaction between component a’ and b’, which differs from claim 22.
In response, “Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).” (see MPEP 2123). Further, “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).” (see MPEP 2141.02). The molar excess maybe expressed as the molar ratio of SiH units to unsaturated group such that the ratio maybe from 2/1 to 8/1 [0067], reading on a ratio of B to A of 0.5. The amount of D used in the hydrosilylation reaction may vary providing the molar qualities of the total aliphatic unsaturated groups present in the reaction form component B) and D) is such that the molar ratio of the SiH units of component A) to the aliphatic unsaturated groups of B) and D) ranges from 10/1 to 1/10 [0120]. The specific ratio of C to A is not taught, however is taught to be an optimizable parameter, wherein a 1:1 ratio of B) and D) would result in .5. As MPEP 2144.05 recites “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine optimization”.
Applicant argues the reaction process between the component (A), (B) and (C) of claim 22 are different form the ‘148 publication. The instant claims are directed to simultaneous hydrosilylation reaction in the presence of a hydrosilylation catalyst. The present specification teaches that such a branched polymer can be advantageously synthesized trough hydrosilylation reaction is reacted simultaneous with a polydimethylsiloxane retained with vinyl groups and with an alpha olefin C). The ‘148 publication teaches the additional reactant (C) containing one aliphatic unsaturation was then added in sufficient amount to completely react the remaining SiH functionality.
In response, MPEP 2113 - “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The ‘148 publication is directed to branched and/or high molecular weight organopoysiloxanes that demonstrate pituitous rheological behaviors and are used in person care formulations (abstract, [0141]) which may be in the form of a gel [0140]. Organopolysiloxane are polymers containing siloxy units where R is typically organo or hydrocarbon group [0011]. The orangopolysiloxane is highly branched organopolysiloane from the reaction of A) an organohydrogensiloxane having at least two SiH containing cyclosiloxane rings, B) a compound of mixture of compounds having at least two aliphatic unsaturated hydrocarbon groups in it molecule and optionally D) a compound or mixture of compounds having mono terminal aliphatic unsaturated hydrocarbon group ([0040]-[0048]), thus teaching the structure of the claims, absent factual evidence to the contrary.
Applicant argues the international search report and cites EP 1010715, the ‘148 publication and Awad. In the art, pituitous rheological behavior is obtained by preparing an elastomer that is milled to obtain tiny particles that are responsible for the pituitous behavior.
In response, each application is handles on its own merits. Additionally, the EP 1010715 publication is not used in the instant rejections. The ‘148 publication does not teach forming milled particles [0013].
Applicant argues the ‘148 publication and the ‘376 publication do not teach or suggest a fluid cosmetic composition with a formulation comprising between 0.1 and 50% by weight of at least some fluid branched polymer having this capability of the maximum normal force or maximum normal pressure.
In response, regarding the limitation of the fluid branched polymer is capable of generating, wherein rotated between two flat plates 1mm apart and with a 50 mm diameter for shear rates between 0.1-1000 s-1 at a temperature of 20 degree C, a maximum normal force of at least 6N corresponding to a maximum normal pressure of 3000 pa is met by the ‘148 publication teaching the D component siloxy units and sufficient molecular weight to impart pituitous behavior to the silicone compositions [0013] wherein shear rate results in normal force below the 3,000 Pa claimed rate (Figures 1 and 5), thus teaching the polymer of the ‘148 publication falling within the maximum normal pressure claimed and is an optimizable parameter. As MPEP 2144.05 recites “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine optimization”. The U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent Applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the exact same ingredients and Applicant’s own disclose supports the suitability of the prior composition as the inventive composition component, the burden is property shifted to Applicant to show otherwise.
Conclusion
No claims are allowed.
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.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDSEY MARIE BECKHARDT whose telephone number is (571)270-7676. The examiner can normally be reached Monday-Thursday 9am to 4pm and Friday 9am to 2pm.
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/LYNDSEY M BECKHARDT/ Examiner, Art Unit 1613
/BRIAN-YONG S KWON/ Supervisory Patent Examiner, Art Unit 1613
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