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 1-9 are pending. Claims 1, 4 and 7 are amended. Claim 10 is canceled.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn.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.
Rejections Withdrawn
Claim Rejections - 35 USC §112(b)
In light of the amendments to the claims the rejection of claims 4 and 7 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn.
Rejections Maintained
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.
The rejection of claims 1-9 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”) is maintained.
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 1, 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 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.
Response to Arguments
Applicants’ arguments of May 7, 2026 have been fully considered and are found to be mostly unpersuasive.
Applicants note the amendment to the claims and assert that these amendments address the indefiniteness concerns. The Examiner agrees and the indefiniteness rejections are withdrawn above.
Applicants argue that in JP ‘359 requires 0.1 to 20% by mass of a perfluoropolyether liquid. If the required perfluoropolyether is included in component (D), selecting the lower limit of the content range for each component in JPO ‘359 results in a ratio of 0.83.
Applicants note that all of the Examples in JP ‘359 contain perfluoropolyether and that the ratios for Examples 1-12 and Comparative Examples 3 yield the values shown in the ratio calculations results, all of which fall outside the claimed range.
Applicants also assert that KR ‘802 also does not teach or suggest a water-in-oil emulsion cosmetic wherein a ratio by mass of an amount of the component (A) to a total amount of the components (C) and (D) is 1.13 or the importance of the ratio to cosmetic properties.
Applicants’ obviousness arguments have been fully reviewed and are not found to be persuasive. Applicants’ arguments that in JP ‘359 if the required perfluoropolyether is included in component (D), selecting the lower limit of the content range for each component in JPO ‘359 results in a ratio of 0.83 are not persuasive because the content is in a range and more than just the lower limit of the range is disclosed.
When the higher values are selected for each of the ranges, the ratio of 1.33 is reached which falls within the claimed range of 1.13 to 3. Specifically, 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 1.
Additionally, there is more disclosure in the prior art than just the Examples. The teachings of JP ‘359 and any prior art reference are more than just the examples and are not limited to the examples. JP ‘359’s teachings are not any less because they are not exemplified.
As described in the rejection above 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.
THIS ACTION IS MADE FINAL. 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.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
SARAH CHICKOS
Examiner
Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619
Prosecution Insights