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 .
DETAILED ACTION
Claims 1-9, 11 and 12 are under consideration.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-9, 11 and 12, drawn to a water-in-oil emulsion comprising a vinyl polymer having at least one unit derived from a carbosiloxane dendrimer, a different silicone acrylate, volatile oils, a C8-C22 alkyl dimethicone, and hydrophobically treated colorants in the reply filed on December 29, 2025 is acknowledged.
The traversal is on the ground(s) that the claims of Group II are drawn to a method and should be rejoined and that unity of invention exists under 37 CFR 1.475(b).
This is not found persuasive because 37 CFR 1.475(a) states the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. Lack of unity of invention may be directly evident "a priori," i.e., before considering the claims in relation to any prior art, or may only become apparent "a posteriori," i.e., after taking the prior art into consideration. For example, independent claims to A + X, A + Y, X + Y can be said to lack unity a priori as there is no subject matter common to all claims. In the case of independent claims to A + X and A + Y, unity of invention is present a priori as A is common to both claims. However, if it can be established that A is known, there is lack of unity a posteriori, since A (be it a single feature or a group of features) is not a technical feature that defines a contribution over the prior art. See MPEP 1850. As set forth in the Requirement for Restriction, the delineated groups of invention lack unity of invention a posteriori, there is no special technical feature, and unity of invention does not exist. Furthermore, there is no basis for rejoinder at this time.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10 and 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-9, 11 and 12 as filed on December 29, 2023 are under consideration.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on May 31, 2024 was considered.
Claim Objections
Claims 2, 7, 8 and 11 are objected to because of the following informalities:
Claim 2: where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. See MPEP 608.01(m) and 37 CFR 1.75(i).
Claim 2, wherein clause after [Chem 1]: “R1” should presumably recite “R1” and Xi” should presumably recite “Xi” consistent with formula (I).
Claim 2: “where said organic group that can be polymerised by radicals contained in the component (A)” should presumably recite “wherein said organic group that can be polymerised using radicals” consistent with the antecedent in claim 2(B) or “wherein said organic group that can be polymerised using radicals in compound a)” consistent with the antecedents in claims 1a) and 2(B) and the recitation in claim 5. However, it seems more appropriate and straightforward to simply reference Y of [Chem 1].
Claim 2, R5: “and” should presumably recite “or”.
Claim 7: “silicone surface agents, N-acyl amino acids and the salts thereof” should presumably recite “silicone surface agents, N-acyl amino acids and salts of N-acyl amino acids” or some variation thereof because it is clear from page 16, lines 7-11 of the instant specification that “the salts” refers only to the amino acids.
Claims 8, 11: the ranges should be formatted consistently, e.g., #1 to #2 wt%, or some variation thereof.
Claim 11b): “7wt%” should recite “7 wt%”.
Claim 11c): “10% wt%” should recite “10 wt%”.
Claim 11e): “30wt%” should recite “30 wt%”.
Appropriate correction is required.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
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 7, 8 and 11 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 pre-AIA the applicant regards as the invention.
Claims 7, 8e) recite the salts thereof. There is insufficient antecedent basis for this limitation in these claims.
Claim 8a) recites an ingredient, a first preferable content thereof, and a second preferable content thereof. Description of examples and preferences is properly set forth in the specification rather than in a single claim because the recitation of examples and preferences leads to confusion over the intended scope of the claim. See MPEP 2173.05(c).
Claim 8b) recites an ingredient, a first preferable content thereof, and a second particular content thereof. Description of examples and preferences is properly set forth in the specification rather than in a single claim because the recitation of examples and preferences leads to confusion over the intended scope of the claim. See MPEP 2173.05(c).
Claim 8c) recites an ingredient and preferable contents thereof. Description of examples and preferences is properly set forth in the specification rather than in a single claim because the recitation of examples and preferences leads to confusion over the intended scope of the claim. See MPEP 2173.05(c).
Claim 8d) recites an ingredient, a first preferable content thereof, an especial content thereof, a particular content thereof, and a second preferable content thereof. Description of examples and preferences is properly set forth in the specification rather than in a single claim because the recitation of examples and preferences leads to confusion over the intended scope of the claim. See MPEP 2173.05(c).
Claim 8e) recites an ingredient and a particular ingredient and also recites a preferable content thereof, a particular content thereof, and an especial content thereof. Description of examples and preferences is properly set forth in the specification rather than in a single claim because the recitation of examples and preferences leads to confusion over the intended scope of the claim. See MPEP 2173.05(c).
Claim 11 recites the acrylate/dimethicone copolymers. There is insufficient antecedent basis for this limitation in the claim.
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.
Claim 11 is 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 11 recites the acrylate/dimethicone copolymers, however, claim 5 from which claim 11 depends recites the silicone acrylate polymer comprises methacrylic groups and polydimethylsiloxane groups. Because the acrylate/dimethicone copolymers appears to omit the methacrylic groups required by claim 5, claim 11 fails to include all of the limitations of claim 5.
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 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 1-9, 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Dique-Mouton et al. (WO 2018/228783 A1, published December 20, 2018, of record) in view of Stepniewski et al. (US 5,599,533, published February 4, 1997, of record) and Choi et al. (KR 100854086 B1, published August 25, 2008, as evidenced by the Google translation).
Dique-Mouton teaches water-in-oil emulsions, comprising a physiologically acceptable medium, for coating keratin materials comprising at least (title; abstract; claims):
an oily continuous phase comprising at least one volatile oil (pages 14-15), as required by instant claims 8c), 11c),
a discontinuous aqueous phase,
at least one hydrophobic film-forming polymer,
at least one nonvolatile oil,
at least one filler,
an emulsifying system, and
at least one pigment, and optionally
at least one water-soluble liquid polyol chosen from glycols (claim 2), as required by instant claim 9.
Regarding the amount of volatile oils of at least 10 wt% as required by instant claim 11c), Dique-Mouton exemplifies embodiments of W/O emulsions comprising at least 13.1 wt% dodecamethylpentasiloxane (volatile oil) (pages 53-54; also page 15, lines 21-32).
The at least one hydrophobic film-forming polymer is chosen vinyl polymers comprising at least one carbosiloxane dendrimer-based unit and is present from 0.5 to 20 wt% (claims 10, 11; pages 24-28), as required by instant claim 11a). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). "[W]here 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 experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05. The vinyl polymer comprises a molecular side chain containing a carbosiloxane dendrimer structure, and may be derived from the polymerization of:
from 0 to 99.9 parts by weight of a vinyl monomer; and
from 100 to 0.1 parts by weight of a carbosiloxane dendrimer containing a radical polymerizable organic group, represented by
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124
256
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in which Y represents a radical-polymerizable organic group, R1 represents an aryl group or an alkyl group containing from 1 to 10 carbon atoms, and Xi represents a silylalkyl group which, when i=1, is represented by
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354
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in which R1 is as defined above, R2 represents an alkylene group containing from 2 to 10 carbon atoms, R3 represents an alkyl group containing from 1 to 10 carbon atoms, Xi+1 represents a hydrogen atom, an alkyl group containing from 1 to 10 carbon atoms, an aryl group, or the silylalkyl group defined above with i=i+1; i is an integer from 1 to 10 which represents the generation of said silylalkyl group, and ai is an integer from 0 to 3; in which said radical-polymerizable organic group contained in component (A) is chosen from:
organic groups containing a methacrylic group or an acrylic group and that are represented by the formulae
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78
280
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72
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in which R4 represents a hydrogen atom or an alkyl group, R5 represents an alkylene group containing from 1 to 10 carbon atoms; and
organic groups containing a styryl group and that are represented by the formula
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94
244
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in which R6 represents a hydrogen atom or an alkyl group, R7 represents an alkyl group containing from 1 to 10 carbon atoms, R8 represents an alkylene group containing from 1 to 10 carbon atoms, b is an integer from 0 to 4, and c is 0 or 1, such that if c is 0, -(R8)c- represents a bond (page 24, line 39 through page 25, line 26), as required by instant claim 2. The vinyl polymer may comprise tris[tri(trimethylsiloxy)silylethyldimethylsiloxy]silylpropyl carbosiloxane dendrimer-based unit corresponding to one of the formulae
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232
458
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(page 27, lines 18-24), as required by instant claim 3. The vinyl polymer is preferably an acrylate / polytrimethylsiloxymethacrylate copolymer having the INCI name: Acrylates / Polytrimethyl Siloxymethacrylate copolymer, in particular that sold in isododecane (volatile oil) (page 28, lines 12-17), as required by instant claims 4, 8a), 11a).
The at least one hydrophobic film-forming polymer may further comprise at least one silicone acrylate copolymer (pages 28-29). The silicone acrylate copolymer comprises carboxylate groups comprising for example methacrylic acid and polydimethylsiloxane groups (page 28, lines 20-50), as required by instant claim 5. The silicone acrylate copolymer may comprise an acrylates/dimethicone dispersed in cyclopentasiloxane (volatile oil) (page 29, lines 32-44), as required by instant claims 8b), 11b). Regarding the amount of the acrylate / dimethicone copolymer of 0.5 to 7 wt% as required by instant claim 11b), Dique-Mouton teaches the at least one hydrophobic film-forming polymer is present from 0.5 to 20 wt% (claim 11; page 19, lines 8-11). See MPEP 2144.05.
The at least one pigment is coated with at least one lipophilic or hydrophobic compound (claim 14; pages 34-48). Lipophilic or hydrophobic treatment agents include silicone surface agents (pages 38-46, in particular page 39, lines 10-20), as required by instant claims 7, 8e), 11e). The compositions comprise at least 5 wt%, from 5 to 40 wt% pigments (page 34, lines 24-27), as required by instant claim 11e). See MPEP 2144.05.
Dique-Mouton further teaches the at least one nonvolatile oil can be chosen from silicone oils such as polydimethylsiloxanes (pages 7-14, in particular page 7, lines 22-25; page 8, lines 8-12).
Dique-Mouton does not teach a C8-C22 alkyl dimethicone as required by claim 1.
Dique-Mouton does not teach the C8-C22 alkyl dimethicone is cetyl dimethicone as required by claims 6, 8d).
Dique-Mouton does not teach 0.05 to 5 wt% cetyl dimethicone as required by claim 11d).
These deficiencies are made up for in the teachings of Stepniewski and Choi.
Stepniewski teaches water-in-oil emulsions comprising silicone oils and optionally further comprising at least one pigment (title; abstract; claims, e.g., 1, 4-7, 25). Nonvolatile silicone oils include dimethicones and alkylated derivatives thereof such as cetyl dimethicone (column 3, lines 20-32), as required by instant claims 6, 8d), 11d).
Choi teaches water-in-oil compositions having excellent oil resistance by using a wax to which a silicone group is added, using an acrylate / silicone copolymer as a film former, and powder coated with a silicone resin (title; abstract; claims). Suitable waxes include stearyl (C18) dimethicone or/and cetyl (C16) dimethicone and may be present from 0.5 to 25 wt% (claims; page 2, middle), as required by instant claims 6, 8d), 11d).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention substitute silicone oils inclusive of cetyl dimethicone as taught by Stepniewski for the nonvolatile silicone oils of the emulsions of Dique-Mouton because simple substitution of functionally equivalent elements yields predictable results, absent evidence to the contrary. One would have been motivated to make the substitution because in order to reap the expected benefit of excellent oil resistance as taught by Choi when cetyl dimethicone is used in combination with acrylate / silicone polymers as embraced by Dique-Mouton and with powders coated with a silicone resin as embraced by Dique-Mouton.
Regarding claim 11, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the cetyl dimethicone in the compositions of Dique-Mouton in amounts from 0.5 to 25 wt% as taught by Choi and to optimize therein in order to reap the expected benefit of excellent oil resistance. It is prima facie obvious to optimize such result-effective variables within prior art conditions or through routine experimentation. See MPEP 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lahousse et al. (US 2016/0038402) teaches lipstick compositions in the form of an emulsion comprising at least 5 wt% non-volatile oils, 1 to 30 wt% film-forming agent chosen from vinyl polymers comprising at least one carbosiloxane dendrimer-based unit, at least 10 wt% water, and coloring materials and optionally further comprising volatile oils; non-volatile oils include PDMSs comprising aliphatic groups such as cetyl dimethicone (title; abstract; claims; paragraph [0044]).
Arnaud (US 2014/0296352) teaches compositions which may be in the form of a W/O emulsion comprising a polymer with a carbosiloxane dendrimer and monoalcohol and optionally further comprising a fatty phase comprising at least one (non)volatile oil; alkyl dimethicones such as cetyl dimethicone are preferably uses as the non-volatile silicone oils (title; abstract; claims; paragraphs [0157], [0225]).
Furuse (JP 2020-180089 A, as evidenced by the Google translation) teaches water-in-oil emulsions comprising 16 to 21 wt% acrylic silicone-based graft polymer, volatile silicone oil, surfactant, waxes, liquid oil, and pigment; the compositions comprise polytrimethylsiloxy methacrylate copolymer and acrylate/dimethicone copolymer (title; abstract; claims).
Iida (JP 2016-121095 A, as evidenced by the Google translation) teaches water-in-oil emulsions comprising spherical organic resin powder, 0.1 to 20 wt% of vinyl-based polymers having a carbosiloxane dendrimer structure at the side chain as instantly claimed and volatile oil (title; abstract; claims).
Muenchow et al. (EP 2181700 A1, as evidenced by the Google translation) teaches cosmetic compositions with at least two structurally different silicone-acrylate polymers inclusive of acrylates / dimethicone copolymer and acrylates / polytrimethylsiloxymethacrylate copolymer (title; abstract; claims).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALISSA PROSSER whose telephone number is (571)272-5164. The examiner can normally be reached M - Th, 10 am - 6 pm.
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.
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/ALISSA PROSSER/
Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner, Art Unit 1600