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 1-12 are currently pending and the claims as originally filed on 03/05/2024 are acknowledged.
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 three (3) information disclosure statement (IDS) submitted on 03/05/2024; 08/29/2024; 03/13/2026 were filed before the mailing date of the instant first action on the merits. The submissions thereof are in compliance with the provisions of 37 CFR 1.97. It is noted that the foreign references have only been considered to the extent that an English language abstract, translation or statement of relevance has been provided to the examiner. Accordingly, the information disclosure statements have been considered by the examiner, and signed and initialed copies are enclosed herewith.
Claim Objections
Claim 1 is objected to a minor informality under 37 CFR 1.75.
Claim 1 recites “the component (A) .” in the last line. That is, extra space is present between “(A)” and “period (.)”. Thus, it would be better to recite “the component (A).” Appropriate correction is requested.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kikuchi et al. (WO2021/241049A1, IDS of 03/13/2026, citation is obtained from its corresponding US2023/0172831A1).
Applicant claims the below claim 1 filed on 03/05/2024:
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Prior Art
Kikuchi discloses a cosmetic containing at least one organosiloxane represented by general formula (1), having a boiling point in a range of 205 to 255° C. and a viscosity of less than 5 mm 2/s at 25° C (e.g., claim 1 of prior art) which reads on the claimed component (A) having identical ranges of boiling point/viscosity:
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(e.g., claim 1 of prior art) and a linear silicone oil such as dimethylpolysiloxane (e.g., KF-96L-1CS, KF-96-L-1.5 CS, KF-96-2CS) or methyl trimethicone (e.g., claim 28 and [0062] of prior art). Here, as evidenced by the attached Safety Data Sheet of Shin Etsu, 2015, pp. 1-7 (see e.g., page 3 of Safety Data Sheet), KF-96L-1CS has a kinematic viscosity 1mm2/s (25°C), and therefore, e.g., such dimethylpolysiloxane and methyl trimethicone read on the claimed volatile oil (B), and its viscosity of 1-2 mm2/s is within the claimed kinematic viscosity of less than 2 mm2/s; in the said formula (I), a is 2 (e.g., claim 9 of prior art) (instant claims 1, 2 and 4-6); the organosiloxane of component (A) includes 3,5-diethyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane, 3,3-diethyl-1,1,1,5,5,7,7,7-octamethyltetrasiloxane, 1,3-diethyl-1,1,3,5,5,7,7,7-octamethyltetrasiloxane, 1,5-diethyl-1,1,3,3,5,7,7,7-octamethyltetrasiloxane, 1,7-diethyl-1,1,3,3,5,5,7,7-octamethyltetrasiloxane, 3,5-dipropyl-1, 1,1,3,5,7,7,7-octamethyltetrasiloxane, 3,3-dipropyl-1,1,1,5,5,7,7,7-octamethyltetrasiloxane, 1,3-dipropyl-1,1,3,5,5,7,7,7-octamethyltetrasiloxane, 1,5-dipropyl-1,1,3,3,5,7,7,7-octamethyltetrasiloxane, 1,7-dipropyl-1,1,3,3,5,5,7,7-octamethyltetrasiloxane, and 3-ethyl-5-propyl-1,1,1,3,5,7,7,7-octamethyltetrasiloxane (e.g., [0035]) and claim 12 of prior art) (instant claim 3); and the cosmetic has light touch, good spread, and excellent water repellency, forms uniform cosmetic film, and successfully achieves favorable feeling on use with no strong oily feeling, and which has excellent stability over time and cosmetic persistence even when blended with various oil agents, such as silicone, hydrocarbon oil, and ester, an organic ultraviolet absorber, or an oily component solid at 25° C (abstract).
In light of the foregoing, instant claims 1-6 are anticipated by Kikuchi.
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.
As indicated above, the present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kikuchi et al. (WO2021/241049A1, IDS of 03/13/2026, citation is obtained from its corresponding US2023/0172831A1) as applied to instant claims 1-6.
Applicant recites claim 1 as noted above:
Kikuchi was discussed with respect to instant claims 1-6 as noted above.
Kikuchi further discloses that the cosmetic further comprises a surfactant having a polyether or polyglycerol group (e.g., [0049] and [0066]) which reads on the claimed component (C)(instant claims 7-12). Therefore, it would have been obvious to further add surfactant to the cosmetics in order to enhance the properties of cosmetics, while reducing surface tension, maintaining the water resistance, and creating stable cosmetic formulation.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims 1-12 would have been obvious within the meaning of 35 USC 103.
From the combined teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the combined references, especially in the absence of evidence to the contrary.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 3-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 28 of copending application No. 17/926009.
Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets require an organopolysiloxane species having a boiling point of 205 to 255C and a kinematic viscosity at 25C of less than 5 mm2/s, and a silicone oil of dimethylpolysiloxane or methyl trimethicone. Please note that dimethylpolysiloxane, e.g., KF-96L-1st has a viscosity of 1 mm2/s as evidenced by Safety Data Sheet of Shin-Etsu noted above. Thus, the claimed invention is obvious over copending ‘009.
This is a provisional double patenting rejection since the conflicting claims have not yet been patented.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYUNG S CHANG whose telephone number is (571)270-1392. The examiner can normally be reached M-F 8-5.
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/KYUNG S CHANG/ Primary Examiner, Art Unit 1613