DETAILED ACTION
Status of Claims
Claims 1-17 are currently pending. Claims 1-16 are currently under consideration and are the subject of this Office Action. This is the first Office Action on the merits of the claims. Non-elected claim 17 is withdrawn from consideration. 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 Office Action: Non-Final.
Election/Restrictions
Applicant’s election of the claims of Group I (claims 1-16) in the response filed on February 24, 2026 (to the December 31, 2025 Requirement for Restriction) is acknowledged. In response to applicant’s election, the claim of Group II (claim 17) is withdrawn from further consideration pursuant to 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant has elected the claims of Group I without traverse.
Accordingly, the December 31, 2025 Requirement for Restriction is made FINAL, and claims 1-16 are examined as follows.
Claim Rejections – 35 U.S.C. § 112 - Indefiniteness
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 6-10 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 , that applicant regards as the invention.
A. Claim 6 is drawn to:
6. ([…]) The forming agent according to claim 1, wherein the first agent comprises at least one selected from the group consisting of a first unsaturated organopolysiloxane and a first hydride functionalized polysiloxane,
wherein when the first agent only comprises the first unsaturated organopolysiloxane out of the first unsaturated organopolysiloxane and the first hydride functionalized polysiloxane, the second agent comprises the second hydride functionalized polysiloxane, and
wherein when the first agent only comprises the first hydride functionalized polysiloxane out of the first unsaturated organopolysiloxane and the first hydride functionalized polysiloxane, the second agent comprises the second unsaturated organopolysiloxane.
is indefinite in the recitation, “the second hydride functionalized polysiloxane.” There is insufficient antecedent basis for this limitation in the claim as no “second hydride functionalized polysiloxane” is recited in claim 1 from which claim 6 depends. See MPEP § 2173.05(e). Subsequent claims 7-10 depend on claims 7-10 and are thus, indefinite as well.
B. Claim 6 is indefinite in the recitation, “the second unsaturated organopolysiloxane.” There is insufficient antecedent basis for this limitation in the claim as no “second unsaturated organopolysiloxane” is recited in claim 1 from which claim 6 depends. See MPEP § 2173.05(e). In this regard, examiner suggests amending claim 6 to read:
6. ([…]) The forming agent according to claim 1, wherein the first agent comprises at least one selected from the group consisting of a first unsaturated organopolysiloxane and a first hydride functionalized polysiloxane,
wherein when the first agent only comprises the first unsaturated organopolysiloxane out of the first unsaturated organopolysiloxane and the first hydride functionalized polysiloxane, the second agent comprises a
wherein when the first agent only comprises the first hydride functionalized polysiloxane out of the first unsaturated organopolysiloxane and the first hydride functionalized polysiloxane, the second agent comprises a
C. Claim 7 is indefinite in the recitation, “the second unsaturated organopolysiloxane.” There is insufficient antecedent basis for this limitation in the claim as no “second unsaturated organopolysiloxane” is recited in claim 6 from which claim 7 depends. See MPEP § 2173.05(e).
D. Claim 8 is indefinite in the recitation, “the second unsaturated organopolysiloxane.” There is insufficient antecedent basis for this limitation in the claim as no “second unsaturated organopolysiloxane” is recited in claim 7 from which claim 8 depends. See MPEP § 2173.05(e).
E. Claim 9 is indefinite in the recitation, “the second hydride functionalized polysiloxane.” There is insufficient antecedent basis for this limitation in the claim as no “second hydride functionalized polysiloxane” is recited in claim 6 from which claim 9 depends. See MPEP § 2173.05(e).
F. Claim 10 is indefinite in the recitation, “the second hydride functionalized polysiloxane.” There is insufficient antecedent basis for this limitation in the claim as no “second hydride functionalized polysiloxane” is recited in claim 9 from which claim 10 depends. See MPEP § 2173.05(e).
Further clarification is required.
Claim Rejections – 35 U.S.C. § 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 1-16 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by YU (US 2012/0237461 A1, Publ. Sep. 20, 2012; US patent family member of JP 2013-536861 A, on 02/09/2024 IDS; hereinafter, “Yu”).
Yu is directed to:
SKIN COMPOSITIONS AND METHODS OF USE THEREOF
ABSTRACT
Provided are therapeutic formulations and methods of use thereof.
Yu, title & abstract. In this regard, Yu teaches “formulations illustrating the two-step application method” including a “reactive reinforcing component first step” formulation “83-54” and a “cross-linking component second step” formulation “60-148-99”:
Example 4
Formulations
[0207] Examples of formulations illustrating the two-step application method are provided below. The reactive reinforcing component first step (e.g., the treatment) includes formulations […], and 83-54 are shown below.
[…]
Formulation 83-54
[0307]
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[0310] The cross-linking component second step includes formulations 60-148-99, 60-144-San 86-114, and 86-141c shown below.
Formulation 60-148-99
[0311]
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Yu, par. [0207], [0307] and [0310]-[0311].
Regarding independent claim 1 and the requirements:
1. ([…]) An application type body-correcting-film forming agent comprising: a first agent comprising a cross-linking reactive ingredient that constitutes a body-correcting film; and a second agent comprising a catalyst for cross-linking the cross-linking reactive ingredient,
wherein at least one of the first agent and the second agent comprises a water-soluble agent.
Yu clearly teaches “formulations illustrating the two-step application method” including a “reactive reinforcing component first step” formulation “83-54” and a “cross-linking component second step” formulation “60-148-99” (Yu, par. [0207], [0307] and [0310]-[0311]), WHEREBY it is noted:
a “reactive reinforcing component first step” formulation “83-54” (Yu, par. [0307]) containing:
“Andisil VS 10,000” and “Andisil VS 165,000” (Yu, par. [0307]) are “Vinyl Dimethicone[s]” (Yu, par. [0207]), which read on a “first agent comprising a cross-linking reactive ingredient that constitutes a body-correcting film” of claim 1 (as well as an “unsaturated organopolysiloxane” and “vinyl-terminated poly dimethylsiloxane” of par. [0081] of the instant published application, US 2024/0358624 A1); and
“Vitamin C complex” or “Ascorbic Acid” (Yu, par. [0307]) reads on a “water-soluble agent” for “wherein at least one of the first agent and the second agent comprises a water-soluble agent” of claims 1-3, a “solid form at room temperature” of claims 2-3, a “crystalline water-soluble agent” of claims 3-4, and “L-ascorbic acid” of claim 4:
2. ([…]) The forming agent according to claim 1, wherein the water-soluble agent is a water-soluble agent that is in a solid form at room temperature.
3. ([…]) The forming agent according to claim 2, wherein the water-soluble agent that is in a solid form at room temperature is a crystalline water-soluble agent.
4. ([…]) The forming agent according to claim 3, wherein the crystalline water-soluble agent is at least one selected from the group consisting of 4-methoxysalicylic acid, tranexamic acid, L-ascorbic acid, 4-methoxysalicylate, tranexamate, L-ascorbate, glycylglycine, nicotinic acid amide, arbutin, L-ascorbic acid glucoside, 1-(2-hydroxyethyl)-2-imidazolidinone, and a pyrimidyl pyrazole compound represented by the following Formula 1 and a salt thereof: […].
(as well as par. [0013] of the instant published application, US 2024/0358624 A1); AND
a “cross-linking component second step” formulation “60-148-99” (Yu, par. [0311]) containing “Platinum divinyl complex” (Yu, par. [0311]), which is “Platinum-divinyltetramethyldisiloxane complex” (Yu, par. [0207]), and reads on “a second agent comprising a catalyst for cross-linking the cross-linking reactive ingredient” of claim 1, and a “platinum divinyltetramethyldisiloxane complex” of claim 11:
11. ([…]) The forming agent according to claim 1, wherein the catalyst is at least one selected from the group consisting of a platinum carbonyl cyclovinylmethylsiloxane complex, a platinum divinyltetramethyldisiloxane complex, a platinum cyclovinylmethylsiloxane complex, and a platinum octanaldehyde/octanol complex.
thereby reading on the “application type body-correcting-film forming agent” of claim 1.
Thus, Yu anticipates claims 1-4 and 11.
Regarding claim 5 and the requirements:
5. ([…]) The forming agent according to claim 1, wherein at least one of the first agent and the second agent comprises the water-soluble agent at 0.1% by mass or more.
Yu’s “reactive reinforcing component first step” formulation “83-54” (Yu, par. [0307]) contains 0.05 to 0.5 wt% “Vitamin C complex” or “Ascorbic Acid” (Yu, par. [0307]). See MPEP § 2131.03 regarding prior art anticipating claimed numerical ranges.
Thus, Yu anticipates claim 5.
Regarding claims 6-10 and the requirements:
6. ([…]) The forming agent according to claim 1, wherein the first agent comprises at least one selected from the group consisting of a first unsaturated organopolysiloxane and a first hydride functionalized polysiloxane,
wherein when the first agent only comprises the first unsaturated organopolysiloxane out of the first unsaturated organopolysiloxane and the first hydride functionalized polysiloxane, the second agent comprises the second hydride functionalized polysiloxane, and
wherein when the first agent only comprises the first hydride functionalized polysiloxane out of the first unsaturated organopolysiloxane and the first hydride functionalized polysiloxane, the second agent comprises the second unsaturated organopolysiloxane.
7. ([…]) The forming agent according to claim 6, wherein the first unsaturated organopolysiloxane and the second unsaturated organopolysiloxane are at least one selected from the group consisting of organopolysiloxanes containing a vinyl group, vinyl-terminated organopolysiloxanes, and organopolysiloxanes containing a vinylated branched chain.
8. ([…]) The forming agent according to claim 7, wherein the first unsaturated organopolysiloxane and the second unsaturated organopolysiloxane are at least one selected from the group consisting of vinyl-terminated polydimethylsiloxanes, vinyl-terminated diphenylsiloxane-dimethylsiloxane copolymers, vinyl-terminated polyphenylmethylsiloxanes, vinylphenylmethyl-terminated vinylphenylsiloxane-phenylmethylsiloxane copolymers, vinyl-terminated trifluoropropylmethylsiloxane-dimethylsiloxane copolymers, vinyl-terminated diethylsiloxane-dimethylsiloxane copolymers, vinylmethylsiloxane-dimethylsiloxane copolymers, trimethylsiloxy-terminated vinylmethylsiloxane-dimethylsiloxane copolymers, silanol-terminated vinylmethylsiloxane-dimethylsiloxane copolymers, vinylmethylsiloxane homopolymers, vinyl T-structure polymers, vinyl Q-structure polymers, monovinyl-terminated polydimethylsiloxanes, vinylmethylsiloxane terpolymers, and vinylmethoxysilane homopolymers.
9. ([…]) The forming agent according to claim 6, wherein the first hydride functionalized polysiloxane and the second hydride functionalized polysiloxane are non-terminally and/or terminally hydrogenated organopolysiloxanes.
10. ([…]) The forming agent according to claim 9, wherein the first hydride functionalized polysiloxane and the second hydride functionalized polysiloxane are at least one selected from the group consisting of hydride-terminated polydimethylsiloxanes, hydride-terminated polyphenyl-(dimethylhydrosiloxy)siloxanes, hydride-terminated methylhydrosiloxane-phenylmethylsiloxane copolymers, trimethylsiloxy-terminated methylhydrosiloxane-dimethylsiloxane copolymers, polymethylhydrosiloxanes, trimethylsiloxy-terminated polyethylhydrosiloxanes, triethylsiloxanes, methylhydrosiloxane-phenyloctylmethylsiloxane copolymers, and methylhydrosiloxane-phenyloctylmethylsiloxane terpolymers.
Yu teaches a “reactive reinforcing component first step” formulation “83-54” (Yu, par. [0307]) containing:
“Andisil VS 10,000” and “Andisil VS 165,000” (Yu, par. [0307]), which are “Vinyl Dimethicone[s]” (Yu, par. [0207]) reading on:
“vinyl-terminated polyphenylmethylsiloxanes” of claim 8,
“vinyl-terminated organopolysiloxanes” of claim 7, and
a “first unsaturated organopolysiloxane” and “second unsaturated organopolysiloxane” of claims 6-8
(as well as par. [0081] of the instant published application, US 2024/0358624 A1);
“Andisil XL-11” (Yu, par. [0307]) is “Hydrogen Dimethicone, SiH Functional” (Yu, par. [0207])
“hydride-terminated polydimethylsiloxanes” of claim 10,
“terminally hydrogenated organopolysiloxanes” of claim 9,
“first hydride functionalized polysiloxane” and “second hydride functionalized polysiloxane” of claims 6 and 9-10
(as well as par. [0103] of the instant published application, US 2024/0358624 A1).
It is noted that the conditional requirements of claim 6 for:
“wherein when the first agent only comprises the first unsaturated organopolysiloxane out of the first unsaturated organopolysiloxane and the first hydride functionalized polysiloxane, the second agent comprises the second hydride functionalized polysiloxane, and
wherein when the first agent only comprises the first hydride functionalized polysiloxane out of the first unsaturated organopolysiloxane and the first hydride functionalized polysiloxane, the second agent comprises the second unsaturated organopolysiloxane,”
are given no patentable weight because neither claim 6 nor claim 1 (from which claim 6 depends) require any means of separation between the instant “first agent” and “second agent.” Therefore, the application of formulation “83-54” (Yu, par. [0307]) with cross-linking formulation, “60-148-99” (Yu, par. [0311]), on skin (Yu, title & abstract) read on the requirements of instant claims 1 and 6 in lack of any further limitations separating the instant “first agent” and “second agent.” However, it is noted that Yu teaches that “[i]n some embodiments, the cross-linking component further comprises a vinyl terminated organopolysiloxane,” e.g., a “vinyl-terminated polysiloxane”:
[0116] In some embodiments, the cross-linking component further comprises a vinyl terminated organopolysiloxane (e.g., a compound of Formula I, II IIa, IIb or IIc). In some embodiments, the amount of vinyl-terminated polysiloxane is a stabilizing amount of vinyl-terminated polysiloxane. The language “stabilizing amount” includes an amount that prevents the degradation of the catalyst and/or the crosslinking component and/or the body corrective film. In some embodiments, the stabilizing amount of vinyl-terminated polysiloxane is less than about 50%, less than about 40%, less than about 30%, less than about 20%, less than about 10%, less than about 5% or less than about 2%. In some embodiments, the stabilizing amount of vinyl-terminated polysiloxane is about 1%.
(Yu, par. [0307]) relating to the “unsaturated organopolysiloxane” of the instant claims associated with the instant “second agent,” and separate containers for keeping the two formulations apart:
[0122] In some embodiments, the reactive reinforcing component and the cross-linking component are prevented from coming into contact prior to use. The reactive reinforcing component and the cross-linking component can be kept from corning into contact prior to use by usual means known to one of skill in the art. In one embodiment, the skin corrective formulation is a two part formulation in which the reactive reinforcing component and said cross-linking component are packaged in separate containers and mixed prior to use. In another embodiment, the reactive reinforcing component is applied to the skin first, and the cross-linking component is applied on top of the reactive reinforcing component. In yet another embodiment, the cross-linking component is applied to the skin first and the reactive reinforcing component is applied on top of the cross-linking component. In a further embodiment, the reactive reinforcing component and the cross-linking component are packaged together in the same container with a barrier between the two components, and are mixed when the components are extracted from the container.
(Yu, par. [0122]), e.g., a “kit” (Yu, par. [0017], [0139] & [0189]-[0190]), which would be an obvious rearrangement (see MPEP § 2123 [R-5] regarding the obviousness of rearranging a reference according to the teachings of that same reference).
Thus, Yu anticipates claims 6-10.
Regarding claims 12-13 and the requirements:
12. ([…]) The forming agent according to claim 1, wherein at least one of the first agent and the second agent comprises at least one selected from the group consisting of a fiber, a pigment, a dye, a thickener, a UV absorber, and a reinforcing material.
13. ([…]) The forming agent according to claim 12, wherein the first agent comprises the reinforcing material at 0.001% by mass or more.
Yu’s “reactive reinforcing component first step” formulation “83-54” contains 35.00 wt.% of a “Reactive constituent and Reinforcing constituent composition,” which contains 26.93 wt.% “Aerosil R 8200” (Yu, par. [0307]) or “Fumed silica modified with hexametbyldisilazane” (Yu, par. [0207]), i.e., 9/4 wt.% fumed silica, which is a “reinforcing material” of claims 12-13 (as well as par. [0139] of the instant published application, US 2024/0358624 A1). See MPEP § 2131.03 regarding prior art anticipating claimed numerical ranges.
Thus, Yu anticipates claims 12-13.
Regarding claim 14 and the requirements:
14. ([…]) The forming agent according to claim 1, wherein at least one of the first agent and the second agent is an emulsion composition.
Yu teaches that “Formulation 83-54 was prepared by a procedure similar to 88-83-V3” (Yu, par. [0308]), which involves mixing similar components as an “emulsion” (Yu, par. [0306]), which reads on the requirements of claim 14 for “wherein at least one of the first agent and the second agent is an emulsion composition.”
Thus, Yu anticipates claim 14.
Regarding claim 15, it is noted that the requirements:
15. ([…]) The forming agent according to claim 1, which is used for skin permeation of the water-soluble agent.
are recitations of intended use. In this regard, it is noted that recitations of intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it reads on the claim. See MPEP § 2103 (I)(C)). Since Yu teaches the structure for the “body-correcting-film forming agent” of instant claim 1, then it reasonably follows that Yu’s composition would be capable of performing the intended use of claim 15.
Thus, Yu anticipates claim 15.
Regarding claim 16 and the requirements:
16. ([…]) A kit comprising the first agent and the second agent in the forming agent according to claim 1, wherein the first agent and the second agent are contained in separate containers, or contained in separate compartments of a container having two or more compartments.
Yu teaches “a multicompartment kit comprising at least two compartments in which one compartment comprises the reactive reinforcing component and the second compartment comprises the cross linking component”:
[0139] In some embodiments, the invention pertains, at least in part, to a kit comprising a therapeutic formulation comprising a reactive reinforcing component and a crosslinking component. In some embodiments, the kit is a multicompartment kit comprising at least two compartments in which one compartment comprises the reactive reinforcing component and the second compartment comprises the cross linking component. […].
(Yu, par. [0139]), which reads on “wherein the first agent and the second agent are contained in separate containers, or contained in separate compartments of a container having two or more compartments” of claim 16.
Thus, Yu anticipates claim 16.
Claim Rejections - Nonstatutory 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 obviousness-type double patenting rejection is appropriate where the conflicting claims 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 conflicting 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.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting over claims 1 and 4-44 of U.S. Patent 9,114,096 B2 to Yu et al., hereinafter “‘096 Patent,” matured from copending Application No. 13/430,563, in view of the disclosure of YU (US 2012/0237461 A1, Publ. Sep. 20, 2012; US patent family member of JP 2013-536861 A, on 02/09/2024 IDS; hereinafter, “Yu”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to a composition that forms a film or skin from an an unsaturated organopolysiloxane and/or first hydride functionalized polysiloxane, and a cross-linking catalyse. However, to the extent that the ‘096 Patent DOES NOT EXPRESSLY RECITE:
the incorporation of a water soluble agent, such as ascorbic acid and amounts thereof, per the requirements of claims 1-5, Yu teaches the incorporation of 0.05 to 0.5 wt% “Vitamin C complex” or “Ascorbic Acid”;
a particular catalyst, such as a platinum divinyltetramethyldisiloxane complex per the requirements of claim 11, Yu teaches the incorporation of a “cross-linking component second step” formulation “60-148-99” (Yu, par. [0311]) containing “Platinum divinyl complex” (Yu, par. [0311]), which is “Platinum-divinyltetramethyldisiloxane complex” (Yu, par. [0207]) per Yu;
a reinforcing material and amounts thereof per the requirements of claims 12-13, Yu teaches the incorporation of 26.93 wt.% “Aerosil R 8200” (Yu, par. [0307]) or “Fumed silica modified with hexametbyldisilazane” (Yu, par. [0207]), i.e., 9/4 wt.% fumed silica;
an emulsified composition per the requirements of claim 14, Yu teaches mixing similar components as an “emulsion” (Yu, par. [0306]); and
a kit separating components of the composition per the requirements of claim 16, Yu teaches separate containers for keeping the two formulations apart (Yu, par. [0122]), e.g., a “kit” (Yu, par. [0017], [0139] & [0189]-[0190]);
wherein the incorporation and formulation thereof would be obvious in order to obtain the advantage of suitable components for a skin-treating, film-forming composition. See MPEP § 2144.07 stating that the selection of a known material based on its suitability for its intended use is prima facie obvious, which cites Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.”
Thus, the ‘096 Patent per Yu render claims 1-16 obvious.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-46 and 56-73 of U.S. Patent 9,724,363 B2 to Yu et al., hereinafter “‘363 Patent,” matured from copending Application No. 14/833,565, in view of the disclosure of YU (US 2012/0237461 A1, Publ. Sep. 20, 2012; US patent family member of JP 2013-536861 A, on 02/09/2024 IDS; hereinafter, “Yu”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to a composition that forms a film or skin from an an unsaturated organopolysiloxane and/or first hydride functionalized polysiloxane, and a cross-linking catalyse. However, to the extent that the ‘363 Patent DOES NOT EXPRESSLY RECITE:
the incorporation of a water soluble agent, such as ascorbic acid and amounts thereof, per the requirements of claims 1-5, Yu teaches the incorporation of 0.05 to 0.5 wt% “Vitamin C complex” or “Ascorbic Acid”;
a reinforcing material and amounts thereof per the requirements of claims 12-13, Yu teaches the incorporation of 26.93 wt.% “Aerosil R 8200” (Yu, par. [0307]) or “Fumed silica modified with hexametbyldisilazane” (Yu, par. [0207]), i.e., 9/4 wt.% fumed silica;
an emulsified composition per the requirements of claim 14, Yu teaches mixing similar components as an “emulsion” (Yu, par. [0306]); and
a kit separating components of the composition per the requirements of claim 16, Yu teaches separate containers for keeping the two formulations apart (Yu, par. [0122]), e.g., a “kit” (Yu, par. [0017], [0139] & [0189]-[0190]);
wherein the incorporation and formulation thereof would be obvious in order to obtain the advantage of suitable components for a skin-treating, film-forming composition. See MPEP § 2144.07 stating that the selection of a known material based on its suitability for its intended use is prima facie obvious, which cites Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.”
Thus, the ‘363 Patent per Yu render claims 1-16 obvious.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting over claims 162-175 of copending US Patent Application No. 15/638,059 (‘059 Application), in view of the disclosure of YU (US 2012/0237461 A1, Publ. Sep. 20, 2012; US patent family member of JP 2013-536861 A, on 02/09/2024 IDS; hereinafter, “Yu”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented. However, it is noted that since the claims of the ‘059 Application are currently allowed, this rejection will therefore no longer be provisional when the claims of the ‘059 Application issue.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to a composition that forms a film or skin from an an unsaturated organopolysiloxane and/or first hydride functionalized polysiloxane, and a cross-linking catalyse. However, to the extent that the 059’ Application DOES NOT EXPRESSLY RECITE:
the incorporation of a water soluble agent, such as ascorbic acid and amounts thereof, per the requirements of claims 1-5, Yu teaches the incorporation of 0.05 to 0.5 wt% “Vitamin C complex” or “Ascorbic Acid”;
a reinforcing material and amounts thereof per the requirements of claims 12-13, Yu teaches the incorporation of 26.93 wt.% “Aerosil R 8200” (Yu, par. [0307]) or “Fumed silica modified with hexametbyldisilazane” (Yu, par. [0207]), i.e., 9/4 wt.% fumed silica;
an emulsified composition per the requirements of claim 14, Yu teaches mixing similar components as an “emulsion” (Yu, par. [0306]); and
a kit separating components of the composition per the requirements of claim 16, Yu teaches separate containers for keeping the two formulations apart (Yu, par. [0122]), e.g., a “kit” (Yu, par. [0017], [0139] & [0189]-[0190]);
wherein the incorporation and formulation thereof would be obvious in order to obtain the advantage of suitable components for a skin-treating, film-forming composition. See MPEP § 2144.07 stating that the selection of a known material based on its suitability for its intended use is prima facie obvious, which cites Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.”
Thus, the ‘059 Application per Yu render claims 1-16 obvious.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-54 of U.S. Patent 10,918,661 B2 to Yu et al., hereinafter “‘661 Patent,” matured from copending Application No. 15/947,132, in view of the disclosure of YU (US 2012/0237461 A1, Publ. Sep. 20, 2012; US patent family member of JP 2013-536861 A, on 02/09/2024 IDS; hereinafter, “Yu”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to a composition that forms a film or skin from an an unsaturated organopolysiloxane and/or first hydride functionalized polysiloxane, and a cross-linking catalyse. However, to the extent that the ‘661 Patent DOES NOT EXPRESSLY RECITE:
the incorporation of a water soluble agent, such as ascorbic acid and amounts thereof, per the requirements of claims 1-5, Yu teaches the incorporation of 0.05 to 0.5 wt% “Vitamin C complex” or “Ascorbic Acid”;
a reinforcing material and amounts thereof per the requirements of claims 12-13, Yu teaches the incorporation of 26.93 wt.% “Aerosil R 8200” (Yu, par. [0307]) or “Fumed silica modified with hexametbyldisilazane” (Yu, par. [0207]), i.e., 9/4 wt.% fumed silica; and
an emulsified composition per the requirements of claim 14, Yu teaches mixing similar components as an “emulsion” (Yu, par. [0306]);
wherein the incorporation and formulation thereof would be obvious in order to obtain the advantage of suitable components for a skin-treating, film-forming composition. See MPEP § 2144.07 stating that the selection of a known material based on its suitability for its intended use is prima facie obvious, which cites Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.”
Thus, the ‘661 Patent per Yu render claims 1-16 obvious.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-18 of U.S. Patent 10,973,848 B2 to Yu et al., hereinafter “‘848 Patent,” matured from copending Application No. 16/011,258, in view of the disclosure of YU (US 2012/0237461 A1, Publ. Sep. 20, 2012; US patent family member of JP 2013-536861 A, on 02/09/2024 IDS; hereinafter, “Yu”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to a composition that forms a film or skin from an an unsaturated organopolysiloxane and/or first hydride functionalized polysiloxane, and a cross-linking catalyse. However, to the extent that the 848’ Patent DOES NOT EXPRESSLY RECITE:
the incorporation of a water soluble agent, such as ascorbic acid and amounts thereof, per the requirements of claims 1-5, Yu teaches the incorporation of 0.05 to 0.5 wt% “Vitamin C complex” or “Ascorbic Acid”;
a particular catalyst, such as a platinum divinyltetramethyldisiloxane complex per the requirements of claim 11, Yu teaches the incorporation of a “cross-linking component second step” formulation “60-148-99” (Yu, par. [0311]) containing “Platinum divinyl complex” (Yu, par. [0311]), which is “Platinum-divinyltetramethyldisiloxane complex” (Yu, par. [0207]) per Yu;
a reinforcing material and amounts thereof per the requirements of claims 12-13, Yu teaches the incorporation of 26.93 wt.% “Aerosil R 8200” (Yu, par. [0307]) or “Fumed silica modified with hexametbyldisilazane” (Yu, par. [0207]), i.e., 9/4 wt.% fumed silica;
an emulsified composition per the requirements of claim 14, Yu teaches mixing similar components as an “emulsion” (Yu, par. [0306]); and
a kit separating components of the composition per the requirements of claim 16, Yu teaches separate containers for keeping the two formulations apart (Yu, par. [0122]), e.g., a “kit” (Yu, par. [0017], [0139] & [0189]-[0190]);
wherein the incorporation and formulation thereof would be obvious in order to obtain the advantage of suitable components for a skin-treating, film-forming composition. See MPEP § 2144.07 stating that the selection of a known material based on its suitability for its intended use is prima facie obvious, which cites Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.”
Thus, the ‘848 Patent per Yu render claims 1-16 obvious.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-13 of copending US Patent Application No. 18/280,820 (‘820 Application), in view of the disclosure of YU (US 2012/0237461 A1, Publ. Sep. 20, 2012; US patent family member of JP 2013-536861 A, on 02/09/2024 IDS; hereinafter, “Yu”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to a composition that forms a film or skin from an an unsaturated organopolysiloxane and/or first hydride functionalized polysiloxane, and a cross-linking catalyse. However, to the extent that the 820’ Application DOES NOT EXPRESSLY RECITE:
the incorporation of a water soluble agent, such as ascorbic acid and amounts thereof, per the requirements of claims 1-5, Yu teaches the incorporation of 0.05 to 0.5 wt% “Vitamin C complex” or “Ascorbic Acid”; and
a reinforcing material and amounts thereof per the requirements of claims 12-13, Yu teaches the incorporation of 26.93 wt.% “Aerosil R 8200” (Yu, par. [0307]) or “Fumed silica modified with hexametbyldisilazane” (Yu, par. [0207]), i.e., 9/4 wt.% fumed silica;
wherein the incorporation and formulation thereof would be obvious in order to obtain the advantage of suitable components for a skin-treating, film-forming composition. See MPEP § 2144.07 stating that the selection of a known material based on its suitability for its intended use is prima facie obvious, which cites Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.”
Thus, the ‘820 Application per Yu render claims 1-16 obvious.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting over claims 1-7 of copending US Patent Application No. 17/800,830 (‘830 Application), in view of the disclosure of YU (US 2012/0237461 A1, Publ. Sep. 20, 2012; US patent family member of JP 2013-536861 A, on 02/09/2024 IDS; hereinafter, “Yu”). This is a provisional double patenting rejection since the conflicting claims have not in fact been patented.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to a composition that forms a film or skin from an an unsaturated organopolysiloxane and/or first hydride functionalized polysiloxane, and a cross-linking catalyse. However, to the extent that the 830’ Application DOES NOT EXPRESSLY RECITE:
the incorporation of a water soluble agent, such as ascorbic acid and amounts thereof, per the requirements of claims 1-5, Yu teaches the incorporation of 0.05 to 0.5 wt% “Vitamin C complex” or “Ascorbic Acid”;
a particular catalyst, such as a platinum divinyltetramethyldisiloxane complex per the requirements of claim 11, Yu teaches the incorporation of a “cross-linking component second step” formulation “60-148-99” (Yu, par. [0311]) containing “Platinum divinyl complex” (Yu, par. [0311]), which is “Platinum-divinyltetramethyldisiloxane complex” (Yu, par. [0207]) per Yu;
a reinforcing material and amounts thereof per the requirements of claims 12-13, Yu teaches the incorporation of 26.93 wt.% “Aerosil R 8200” (Yu, par. [0307]) or “Fumed silica modified with hexametbyldisilazane” (Yu, par. [0207]), i.e., 9/4 wt.% fumed silica;
an emulsified composition per the requirements of claim 14, Yu teaches mixing similar components as an “emulsion” (Yu, par. [0306]); and
a kit separating components of the composition per the requirements of claim 16, Yu teaches separate containers for keeping the two formulations apart (Yu, par. [0122]), e.g., a “kit” (Yu, par. [0017], [0139] & [0189]-[0190]);
wherein the incorporation and formulation thereof would be obvious in order to obtain the advantage of suitable components for a skin-treating, film-forming composition. See MPEP § 2144.07 stating that the selection of a known material based on its suitability for its intended use is prima facie obvious, which cites Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.”
Thus, the ‘830 Application per Yu render claims 1-16 obvious.
Conclusion
Claims 1-16 are rejected. No claims are allowed.
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/DOMINIC LAZARO/Primary Examiner, Art Unit 1611