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
Status of Claims
Claims 1-10 are pending.
Election/Restrictions
Applicants’ election of Group I and the following species: octylsilanetriol as a species of organosilanol component and diazolidinyl urea as a species for hemiaminal component, in the reply filed on 8/3/2026 is acknowledged. The election was made without traverse.
In view of the elected species, the examination and search will be expanded to the following subgenus: monomeric alkylsilanol compounds including octylsilanetriol and hemiaminal ether compounds such as diazolidinyl urea and imidazolidinyl urea.
Accordingly, claims 3 and 9-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group or species, there being no allowable generic or linking claim. Claims 1-2 and 4-8 are under examination in the instant office action.
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 1-2 and 4-8 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. All the dependent claims are included.
Claim 1 recites “a composition comprises at least one organosilanol component and at least one organic hemiaminal component”.
First, the claimed composition is of indeterminate scope because it is unclear whether 1) the composition requires comprising a first compound having organosilanol group and a second compound having organic hemiaminal group; or 2) it encompasses a composition comprising a single compound having both organosilanol and organic hemiaminal components (functional groups) by utilizing the word, “component”. For the examination purpose, the first interpretation will be used.
Second, the scopes of said organosilanol component and said organic hemiaminal component are unclear because they only recite a functional group of the compounds and there are no further indications for what additional structures, chemical groups, and substitutions are present and attached to those moieties. A compound having certain functional groups or moieties allows for inclusion of indefinite number of chemical groups or substituents other than those specified and there are a large number of ways of connecting one chemical moiety to another. In the absence of such structural characteristics intended to effectuate the compound, it will inevitably lead to speculative compounds which do not exhibit the desired properties. Such broad language makes the claims indefinite because the metes and bounds of the claims cannot be ascertained.
Third, dependent claims 5 and 8 further raise ambiguity of the scope of claimed “organic hemiaminal component” and “organosilanol” recited in claim 1.
The dependent claim 5 recites “the at least one organic hemiaminal is selected from the group consisting of a hemiaminal ether, a hemiaminal silyl ether, and a hemiacetal silyl ether. A hemiaminal (also carbinolamine) is a functional group or type of chemical compound that has a hydroxyl group and an amine attached to the same carbon atom. However, a hemiacetal silyl ether has the general structure of R-CH(OR')(OSiR3), thus it does not have amine group which is required for hemiaminal component.
The dependent claim 8 recites “the at least organosilanol component comprises an organosilanetriol and a diorganosiloxane”. It is unclear whether it is intended to mean “the at least organosilanol component is selected from either an organosilanetriol or a diorganosiloxane”, or the at least organosilanol component is a compound having both an organosilanetriol and a diorganosiloxane groups. If the first interpretation is correct, the claim recites diorganosiloxane as an organosilanol component. An organosilanol is a silicon-based organic compound containing at least one hydroxyl group (-OH) attached directly to a silicon atom. However, diorganosiloxane does not appear to be an organosilanol since it does not have free hydroxy group. For the examination purpose, the first interpretation will be used.
Fourth, the scope of “an amine bound to a polymeric siloxane” recited in claim 7 is also unclear because they only recite a functional group of the compounds and there are no further indications for what additional structures, chemical groups, and substitutions are present and attached to those moieties. A compound having certain functional groups or moieties allows for inclusion of indefinite number of chemical groups or substituents other than those specified and there are a large number of ways of connecting one chemical moiety to another. In the absence of such structural characteristics intended to effectuate the compound, it will inevitably lead to speculative compounds which do not exhibit the desired properties. Such broad language makes the claims indefinite because the metes and bounds of the claim cannot be ascertained.
As such, one of ordinary skill could not ascertain and interpret the metes and bounds of the patent protection desired as to these terms.
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 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], 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.
Claims 5 and 8 are rejected under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), 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.
As stated above in the rejection under 35 U.S.C. 112 (b), claims 5 and 8 recite compounds (i.e., hemiacetal silyl ether and diorganosiloxane), which are not encompassed by said organosilanol and organic hemiaminal components recited in claim 1. As such, claims 5 and 8 fail to further limit the subject matter of the claim 1 from which they depend.
Applicants 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)(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 1-2 and 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DATABASE GNPD [Online] MINTEL; 26 August 2014, anonymous: "Nutri Cream," XP055694393 (hereafter, XP055694393; cited in the IDS filed on 8/6/2024).
XP055694393 disclose a composition comprising methylsilanol mannuronate (monomeric organosilanol) and imidazolidinyl urea (hemiaminal ether) (p2, Ingredients).
While the composition of the prior art comprises additional ingredients, the instant claims recite the open-ended language, "comprising", thus, they do not exclude additional unrecited elements (see MPEP 2111.03).
As such, the instant claims are anticipated by XP055694393.
Claims 1-2 and 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DATABASE GNPD [Online] MINTEL; 7 July 2011 (2011-07-07), anonymous: "Anti-Wrinkle Eye Contour Cream," XP055694395 (hereafter, XP055694395; cited in the IDS filed on 8/6/2024).
XP055694395 discloses a composition comprising silanetriol (monomeric organosilantriol) and imidazolidinyl urea (hemiaminal ether) (p2, Ingredients).
While the composition of the prior art comprises additional ingredients, the instant claims recite the open-ended language, "comprising", thus, they do not exclude additional unrecited elements (see MPEP 2111.03).
As such, the instant claims are anticipated by XP055694395.
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.
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 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.
Claims 1-2 and 4-8 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0044550 (hereafter, ARKLES; cited in the IDS filed on 8/6/2024) in view of US 20170172876 (hereafter, WESER).
ARKLES teaches a composition in aqueous solution comprising alkylsilanetriols (monomeric organosilanetriol) and/or oligomeric alkylsilanetriol condensates stabilized by addition of an amine functional polysiloxane (silicone) (abstract, [0009], [0010], and [0015]).
ARKLES specifically discloses exemplary compositions comprising propylsilanetriol and octylsilanetriol, which are formed from hydrolysis of propyltriethoxysilane and octyltriethoxysilane, respectively (examples 1 and 3).
ARKLES also teaches the composition is used in a hair care treatment product for improving hair combability (abstract). ARKLES further teaches that the compositions have even greater utility on flexible substrates, such as packaging and hair, where they demonstrate the ability to withstand flexure and aggressive washing and the hair treated with the composition exhibits improved “combability,” that is, the ability to more easily brush or comb the hair without tangling or knotting ([0013]).
ARKLES does not specifically disclose organic hemiaminal component such as diazolidinyl urea.
However, it was well-known in the art that diazolidinyl urea as a preservative has been commonly used for hair treatment compositions as evidenced by WESER (abstract, [0020] and [0031]).
Thus, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use diazolidinyl urea as a preservative for the aqueous solution formulation of ARKLES for preventing microbial growth. The skilled artisan would have been motivated to do so on the reasonable expectation that the addition of a known preservative for hair care formulations would provide its known antimicrobial effects for the aqueous solution formulation of ARKLES. Generally, it is prima facie obvious to select a known material for incorporation into a composition based on its recognized suitability for its intended use. See MPEP 2144.07
Claims 1-2, 4-5, and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0044550 (hereafter, ARKLES; cited in the IDS filed on 8/6/2024) in view of US 2015/0344461 (hereafter, ZHANG) and WO 2011/074144 (hereafter, DE BONI).
ARKLES teaches a composition in aqueous solution comprising alkylsilanetriols (monomeric organosilanetriol) and/or oligomeric alkylsilanetriol condensates stabilized by addition of an amine functional polysiloxane (silicone) (abstract, [0009], [0010], and [0015])
ARKLES specifically disclose exemplary compositions comprising propylsilanetriol and octylsilanetriol, which are formed from hydrolysis of propyltriethoxysilane and octyltriethoxysilane, respectively (examples 1 and 3).
ARKLES also teaches the composition is used in a hair care treatment product for improving hair combability (abstract). ARKLES further teaches that the compositions have even greater utility on flexible substrates, such as packaging and hair, where they demonstrate the ability to withstand flexure and aggressive washing and the hair treated with the composition exhibits improved “combability,” that is, the ability to more easily brush or comb the hair without tangling or knotting ([0013]).
ARKLES does not specifically teach an organic hemiaminal component such as hemiaminal ether.
ZHANG teaches hemiaminal ethers and the use thereof for hair care compositions wherein the hair care compositions may be used to improve hair stiffness, curl retention, and/or hair conditioning (abstract, [0010], [0055], and [0055]).
Also, DE BONI teaches the use of a composition comprising at least one reactive molecules for treating keratin fibers wherein the reactive molecules preferably has at least one chemical functional groups such as -SH, -OH, -COOH, and -NH2, which can form at least one covalent bond with at least one functional group on keratin fibers and include hemiaminal and silanol (abstract, p5, para 5, p6, para 7-p7, para 1, and claim 12). DE BONI further teaches a reactive molecule having an alkoxy group and the like, can react with keratin fibers by hydrolyzing to form a silanol or silanols which will then form a siloxane bond or bonds with hydroxy group (s) on the keratin fibers and the silanol has at least one hydroxy group bonded to a silicon atom and may have 1, 2 or 3 hydroxy groups (p6, para 3 and p7, para 1). In addition, DE BONI teaches that a reactive molecule can easily stay on or in the keratin fibers and thus the composition comprising a reactive molecule can provide keratin fibers such as hair with good cosmetic effects, and in particular superior repairing or recovering effects, which can be effective against various stresses for a long time (p4, para 3-50).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the alkylsilanol such as alkylsilanetriols of ARKLES in combination with hemiaminal ether compound of ZHANG because ZHANG teaches that a hemiaminal ether are useful in hair care formulation for improving hair stiffness, curl retention, and/or hair conditioning. Also, DE BONI teaches that both silanol and hemiaminal as reactive molecules are easily stay on or in the keratin fibers and provide keratin fibers such as hair with good cosmetic effects, and in particular superior repairing or recovering effects. Thus, one of ordinary skill in the art would have been motivated to do so on the reasonable expectation of getting combined effects in the treatment of hair. According to M.P.E.P. § 2144.06, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BONG-SOOK BAEK whose telephone number is 571-270-5863. The examiner can normally be reached 9:00AM-6:00PM Monday-Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached on 571-272-6175. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/BONG-SOOK BAEK/Primary Examiner, Art Unit 1611
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