DETAILED ACTION
Claims 22-32 are currently pending. Claims 22-25 and 27 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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 01/29/2026 is acknowledged.
Claims 30-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/29/2026.
Applicant’s election without traverse of foundation in the reply filed on 01/29/2026 is acknowledged.
Claims 26 and 28-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/29/2026.
Priority
The instant application is a national stage entry of PCT/IB2022/054827, filed 05/24/2022, which claims priority to IT102021000013463, filed 05/25/2021.
Information Disclosure Statement
Applicant’s Informational Disclosure Statement, filed on 11/22/2023 has been considered. Please refer to Applicant's copy of the 1449 submitted herein.
Claim Rejections - 35 USC § 112 (b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 22-25 and 27 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.
Claim 22 contains the limitation (expressed in equivalent of polystyrene) in A), B) and C). The limitation included in the parenthesis makes it unclear if the limitation is required or optional, thus leading to unclear metes and bounds. For examination purposes the limitations presented in the parenthesis will be interpreted as optional. Additionally, the limitation of equivalents of polystyrene has unclear metes as bounds as there is no styrene in the A), B) or C). Claims 23-25 and 27 are additionally rejected as not curing the ambiguity of claim 22.
Claims 22 and 24: Claim 22 contains the limitation A) … functional groups X in chain, B) … functional groups of type Y capable of reacting with functional group X, and C) … reactive functional group Y per molecule, capable of reacting with functional group X. Claim 22 additionally comprises specific structural formula of A), B) and C) with narrowly defined variable groups. Claim 24 additionally recites the functional groups X and Y are selected from complementary reactive groups carboxyl, vinyl, hydroxyl alkoxy… groups, amine and isocyanates. It is unclear if the X and Y functional and reactive groups are in addition to those in the structural formula defined in claim 22, as claim 22 broadly recites linear polymers A) and B) and molecule o linear oligomer and additionally provides specific structural formula defined, which do not include reactive groups such as those found in claim 24. For examination purposes the structural formulas recited in claim 22 will be deemed to define A), B) and C) structural limitations of the claim. Claims 23, 25 and 27 are additionally rejected as not curing the ambiguity of claims 22 and 24.
Claim 22 recites the limitation "the functional groups of B and A", it is unclear if the functional groups referred to are the reacted reactive functional group X of A) and the reactive functional groups of type Y of B) or some other functional groups. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation "the functional groups of C and A", it is unclear if the functional groups referred to are the reacted reactive functional group X of A) and the reactive functional groups of type Y of C) or some other functional groups. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation "the reactive sites Y or B and C". Claim 22 previously recites reactive functional group Y, which is not the same as “reactive sites”. There is insufficient antecedent basis for this limitation in the claim.
Claims 23 contains the limitation of “in particular silicones, polyesters and polyurethanes”. The phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claim 23 has unclear metes and bounds as it is unclear if the limitations following “in particular” are required in the instant claim. For examination purposes the limitations will be treated as optional. Claim 23 additionally has unclear metes and bounds as those specifically recited as “polyesters and polyurethanes” appear to be outside the structures provided for A and B in claim 22.
Claim 24 contains the limitation alkoxy (-O-CH3…) groups. The limitation included in the parenthesis makes it unclear if the limitation is required or optional, thus leading to unclear metes and bounds. For examination purposes the limitations presented in the parenthesis will be interpreted as optional.
Claim Rejections - 35 USC § 112 (d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 23 and 24 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 23 contains the limitation of wherein the polymers of A and B are selected from families of polymers used in cosmetic, in particular silicones, polyester and polyurethanes. Instant claim 22 defines the structure of A) and B) and does not include polyesters of polyurethanes. Thus, the polymers of claim 23 are broader than those defined in claim 22, from which it depends.
Claim 24 contains limitations of wherein the reactive functional groups X and Y are selected from complementary reactive groups, in particular Si-H, carboxyl, vinyl, hydroxy, alkoxy, amine and isocyanates. Instant claim 22, from which it depends defines the structural formations A) B) and C) including functional groups and does not include e.g. carboxyl, hydroxyl, alkoxy, amines or isocyanates.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 22-25 and 27 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.
Regarding claim 22-25, 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 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.
Conclusion
No claims are allowed.
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