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 .
Status of Claims
Claims 1-10 are pending. This is the first office action on the merits.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The Information Disclosure Statements filed December 19, 2023 and January 12, 2024 have been reviewed.
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.
Claims 4 and 7 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 4 is rejected under 35 USC 112(b) for reciting the limitation “(X)” and “(Y)” in referring to claim 1. Claim 1 does not recite an “(X)” and “(Y)”. Claim 3 does recite a “(X)” and “(Y)”, however, and for the purposes of this office action claim 4 will be interpreted as if it is referring to claim 3.
It is suggested that amending claim 4 to depend from claim 3 would overcome this lack of clarity.
Claim 7 is rejected under 35 USC 112(b) for reciting the limitation “wherein the ratio of the component (D) is 0.2 to 7% by mass. This phrase is vague and confusing because it is not clear what the ratio is in respect to. In short, a ratio of component (D) to what? Additionally, a ratio does not usually have an expression of % by mass.
This phrase is not explained in the specification and cannot be determined by reference to any other claims. As a result, one of ordinary skill in the art would not be reasonably apprised of how to determine what this phrase means.
For the purposes of this office action claim 7 will be interpreted as if the phrase recites an amount of component (D) is 0.2 to 7% by mass.
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.
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2014/227359 (12/8/2014)(12/19/2023 IDS)(“JP”) in view of KR 20110032802 (3/30/2011) as evidenced by the specification and Span 83 - Croda - 8007-43-0 - Halal – Knowde(accessed 2/3/2026)(“Span 83”).
JP teaches a water-in-oil emulsified cosmetic that contains trimethylsiloxysilicic acid has excellent moisture retention of the skin has a glossy finish and does not easily transfer color over time. The composition comprises (a) 0.01 to 20% by mass by mass of a perflurorpolyether liquid at 25 ˚C, (b) 0.1 to 40% by mass trimethylsiloxysilicic acid, (c) 0.1 to 20% by mass of a polyether-modified silicone, (d) 0.1 to 10% by mass of a non-volatile oil that is liquid at 25 ˚C and has a solubility parameter of 16.5 or more, (e) volatile silicone oil of 1-60 mass %. (See Abstract). Water is present in an amount of at least 5% by mass. At least 5% by mass overlaps with the 5 to 80% by mass called for in instant claim 6. JP teaches a makeup cosmetic as called for in instant claim 8. (See Abstract, page 2 and 10 and claim 2).
Trimethylsiloxysilicate is called for in instant claim 1. 0.1 to 40% trimethylsiloxysilicic acid by mass overlaps with the 1 to 20% trimethylsiloxysilicate called for in instant claim 1. 0.1 to 60% by mass of a volatile silicone oil overlaps with the 10 to 60% by mass of a volatile oil called for in instant claim 1(a). 0.1 to 10% by mass of a non-volatile oil that is liquid at 25 ˚C overlaps with the 0 to 10% by mass of a nonvolatile liquid oil as called for in instant claim 1(d). 0.1 to18566196 10% by mass of a non-volatile oil that is liquid at 25 ˚C also overlaps with the 0.2 to 7% by mass of a nonvolatile liquid oil as called for in instant claim 7.
JP teaches that a surfactant may be present in addition to the perflurorpolyether modified silicone which contains a polyoxyalkylene group and functions as a surfactant. (See page 10). 0.1% to 20 % by mass of a surfactant combined with 0.1 to 10% by mass non-volatile liquid oil amounts to 0.2% at the lowest ends of the ranges. 0.2% by mass is 15% by mass or less as called for in instant claim 2.
JP does not expressly name an additional surfactant, other than to say that one may be present in the composition. JP does not teach wherein the trimethylsiloxysilicates are a mixture of trimethylsiloxysilicate of different viscosities. This deficiency is made up for with the teachings of KR.
KR teaches a cosmetic composition provided to improve UV protection by uniform application to the skin. The composition contains a silicon film forming agent that contains MQ resin. (See Abstract). KR credits the silicone film forming agents with the improved UV protection of the sunscreen cosmetic compositions because of their ability to facilitate uniform application to the skin. The silicone film forming agents can be trimethylsiloxysilicate/dimethicone as well as other trimethylsiloxysilicates. KR teaches that the scope and range of the MQ resin film used in the instant invention are not limited and may be varied and blended in a range that does not interfere with the compositions’ overall effect. (See page 5).
KR teaches that the following silicone film formers can be blended and used in the composition. KF-9021 Trimethylsiloxysilicate and cyclopentasiloxane may be combined with X-21-5249 Trimethylsiloxysilicate and cyclotetrasiloxane. (See page 5). KR teaches that its sunscreen composition is preferably in a water-in-oil emulsion formulation. (See page 6).
KR exemplifies a composition that contains the surfactant sorbitan sesquioleate in an amount of 0.3% (See Examples 1 and 2). Sorbitan sesquioleate is a nonionic water-in-oil surfactant (also known as Span 83) that has an HLB of 3.7 as evidenced by Span 83. A nonionic surfactant is called for in instant claim 1c. A nonionic surfactant with an HLB of 2 to 8 is called for in instant claim 1c as well. 0.3% falls within the 0.2% to 10% called for in instant claim 1.
With respect to claim 10, the amount of trimethylsiloxysilicate is 0.1 to 40% by mass and the amount of 0.1 to 20% by mass of a polyether-modified silicone surfactant combined with 0.1 to 10% by mass of a non-volatile oil (0.1 to 40% by mass/(0.1 to 20% by mass + 0.1 to 10% by mass) = 1.33 when the higher values are selected for each of the ranges. 1.33 falls within the 1.13 to 3 called for in instant claim 10. 1.33 also falls within the 1 to 3 range called for in instant claim 1.
The combination of Trimethylsiloxysilicate KF-9021 and Trimethylsiloxysilicate X-21-5250 has a viscosity display value of 160 as evidenced by Example 7 in table 4 of the specification. With respect to claim 9, a viscosity display value of 160 falls within the range of 450 to 150 [mPa.s) * (g/cm3)].
Trimethylsiloxysilicate KF-9021 has a viscosity display value of 6,290 [mPa.s) * (g/cm3)] as evidenced by the specification at [0021]. 6,290 is greater than 500 as called for in instant claim 3. 6,290 also falls within the 500 to 7000 called for in instant claim 4.
Trimethylsiloxysilicate X-21-5250 has a viscosity display value of 37 [mPa.s) * (g/cm3)] as evidenced by the specification at [0021]. 37 is less than 130 as called for in instant claim 3. 37 falls within the 30 to 100 called for in instant claim 4.
With respect to claim 5 KR teaches in Example 1 various trimethylsiloxysilicates included in amounts of 20 wt% and 20 wt %, so a 1:1 ratio is suggested by the Examples. A 1:1 ratio falls within the 0.5 to 4 ratio called for in instant claim 5.
It would be prima facie obvious before the earliest effective filing date for one of ordinary skill in the art making the JP cosmetic composition of 0.01 to 20% by mass by mass of a perflurorpolyether liquid at 25 ˚C, 0.1 to 40% by mass trimethylsiloxysilicic acid, 0.1 to 20% by mass of a polyether-modified silicone, 0.1 to 10% by mass of a non-volatile oil that is liquid at 25 ˚C and has a solubility parameter of 16.5 or more, and 1-60 mass% volatile silicone oil to have the trimethylsiloxysilicate be a mixture of KF-9021 Trimethylsiloxysilicate and cyclopentasiloxane and X-21-5249 Trimethylsiloxysilicate and cyclotetrasiloxan and the additional surfactant JP teaches is desirable be 0.3% sorbitan sesquioleate as taught by KR in order to have a cosmetic with improved and uniform application to the skin as taught by KR.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6.
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SARAH CHICKOS
Examiner
Art Unit 1619
/SARAH ALAWADI/Primary Examiner, Art Unit 1619