DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Group III, claims 2-8 and 10-16, drawn to a silicon elastomer particle in the reply filed on 31 August 2026 is acknowledged. The traversal is on the ground(s) that Okabe does not disclose the particularly claimed combination. Rather, Okabe generally discloses rubber particles comprising a copolymer having a polyester structure and an organopolysiloxane structure, and more particularly a hydrosilylation-crosslinked product of (A) a polyester having at least two aliphatic unsaturated groups per molecule and (B) an organohydrogenpolysiloxane having at least two silicon atom-bonded hydrogen atoms per molecule. This is not found persuasive because the organopolysiloxane structure of Okabe et al. is within the scope of the organopolysiloxane instantly claimed, the polycaprolactone according to Okabe et al. are within the scope of the reactive group-containing polycaprolactone compounds instantly claimed. Also, Okabe et al. disclose a curing agent within the scope of the instant claims. Therefore, the instant claims do not comprise a special technical feature in view of the rubber particles according to Okabe et al.
The requirement is still deemed proper and is therefore made FINAL.
Claims 17 and 21-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 31 August 2026.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 9 August 2024 and 28 August 2026 were filed before the mailing date of a non-final Office action. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Rejections - 35 USC § 112
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.
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(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 11 recites the limitation "the crosslinking reactive silicone composition" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. The examiner recommends that Applicant amend this limitation to “the crosslinkable silicone composition”.
Also, Claim 11 recites “The silicone elastomer particles according to claim 7”… is cured in the form of a sheet. It is unclear whether claim 11 is drawn to the silicone elastomer particles according to claim 7, or if claim 11 is drawn to a silicone elastomer sheet. The specification states that the shape of the silicone elastomer particles according to the present invention includes, for example, spherical, regular spherical shape, elliptical, and irregular shapes, and in particular, spherical and regular spherical shapes are preferred (Specification, [0044]). It appears from the instant specification that Applicant is attempting to define a property of the crosslinked silicone elastomer composition by forming a sheet from the same material used to prepare the particles and testing the hardness of the sheet (Specification, [0045]). However, claim 11 as written is drawn to both the particles and the sheet. The examiner recommends that Applicant amend the claim to state something similar to: “The silicone elastomer particles according to claim 7, wherein a sheet prepared from the same crosslinkable silicone composition used to prepare the particles has a hardness…”
Claims 2-6 are 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.
Claims 2-6 depend from claim 7, which is not a previously set forth claim. Therefore, the claims do not depend from a claim previously set forth and then specify a further limitation of the subject matter claimed as required by the statute. The examiner recommends that Applicant cancel claims 2-6 and add new claims with their limitations.
Also, claim 5 depends from claim 7 and states that the reactive group-containing polycaprolactone compound is a synthesis raw material for silicone elastomer particles. Claim 7 already states that the silicone elastomer particle comprises a reactive group-containing polycaprolactone compound of structural formula (1). The recitation that the polycaprolactone compound is a synthesis raw material does not change the reactive group-containing polycaprolactone compounds structure. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 2-13 and 15-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Okabe et al. (WO 2022/019179 A1, priority filing date 21 July 2020; English-language equivalent EP 4 186 943 A1 referred to herein).
Regarding claims 2-11, 13 and 15-16, Okabe et al. disclose rubber particles prepared by reacting an alkenyl group-containing poly-ε-caprolactone 1 (depicted below), a phenyl hydrogen polysiloxane (depicted below) and a platinum catalyst. The rubber particles had a volume average particles size of 5 µm, and the hardness of the rubber making up the rubber particles was 63 ([0082]-[0086]). Okabe et al. disclose that the alkenyl group-containing poly-ε-caprolactone 1 is synthesized by reacting a poly(ε-caprolactone)diol (PLACCEL 205U) with undecenoic acid chloride. Okabe et al. also disclose rubber particles prepared by reacting an alkenyl group-containing poly-ε-caprolactone 2 (depicted below), a phenyl hydrogen polysiloxane (same as above) and a platinum catalyst. The rubber particles had a volume average particles size of 5 µm, and the hardness of the rubber making up the rubber particles was 82 ([0094]). Okabe et al. disclose that the alkenyl group-containing poly-ε-caprolactone 2 is synthesized by reacting a poly(ε-caprolactone)tetraol (PLACCEL 410) with undecanoic acid chloride.
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(1)
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(2)
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As evidenced by the instant specification, Examples 1 and 3, PLACCEL 205 reacted with undecanoic acid chloride yields the poly-ε-caprolactone 1 wherein R6 is -CH2CH2OCH2CH2)- (equivalent to Structural Formula 1-1), and PLACCEL 410 yields poly-ε-caprolactone 2 wherein R9 is
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(equivalent to Structural Formula 1-3).
Regarding claim 12, Okabe et al. disclose coating the above rubber particles with a granular polyorganosilsesquioxane ([0087]-[0090], [0095]).
Regarding claim 13, Okabe et al. disclose rubber particles comprising the same components as instantly claimed. Therefore, in the absence of evidence to the contrary, the rubber particles according to Okabe et al. will inherently comprise a mesoporous structure.
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, 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 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.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Okabe et al. (WO 2022/019179 A1, priority filing date 21 July 2020; English-language equivalent EP 4 186 943 A1 referred to herein) as applied to claims 2-13 and 15-16 above, further in view of Liles et al. (Polymeric Delivery of Therapeutics, 2010).
Regarding claim 14, Okabe et al. do not explicitly disclose an oil agent that is liquid at 40 °C in the silicone elastomer particle, as instantly claimed.
Liles et al. teach that silicone elastomeric particles can be used to carry certain oily substances or emollients to skin such as mineral oil, glycerides, fatty esters and sunscreens (pg. 216-217; Table I).
Therefore, it would have been prima facie obvious for a person of ordinary skill in the art prior to the effective filing date of the instant claims to prepare the silicone elastomer particles according to Okabe et al., and to further include an oil for delivery to the skin, as reasonably suggested by Liles et al. It would have been obvious to select an oil that is liquid at 40 °C, such as mineral oil, castor oil or sunflower oil, as taught by Liles et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nathan W Schlientz whose telephone number is (571)272-9924. The examiner can normally be reached 10:00 AM to 6:00 PM, Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Liu can be reached at (571) 272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/N.W.S/Examiner, Art Unit 1616
/ERIN E HIRT/Primary Examiner, Art Unit 1616
