DETAILED ACTION
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 . Claims included in the prosecution are claims 1-4.
Applicants' arguments, filed 10/01/2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Budnik et al. (US 4,855,379, Aug. 8, 1989) (hereinafter Budnik) (IDS reference) in view of Hüttinger et al. (US 4,698,178, Oct. 6, 1987) (hereinafter Hüttinger) (IDS reference).
Budnik discloses a silicone surfactant having the formula: MDaDobD”cM, wherein M represents Me3SiO1/2, D represents Me2SiO, Do represents MeSi(O)CH2CH2Si(Me)O-(Me2SiO)x, where x = 2 to 4, and D” represents MeSi(O)CH2CH2CH2-O-Polyether, in which a has a value of from 0 to 200, b has a value of from 1 to 200, and c has a value of from 1 to 200 (claim 4). The silicone surfactant contains cyclic siloxane pendants (col. 4, lines 1-3).
Budnik’s M corresponds to the claimed
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and
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, Da corresponds to the claimed
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, Dob corresponds to the claimed
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, and D”c corresponds to claimed
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, wherein claimed c = 0.
Budnik differs from the instant claims insofar as not disclosing wherein Dob and D”c are reversed in order, wherein the polyether in D” is (C2H4O)e-(C3H6O)f-R5, and wherein the silicone surfactant is used in cosmetics.
However, Hüttinger discloses the use of copolymers of the formula
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as emulsifiers for the preparation of W/O emulsions. In the formula R is an alkyl radical with 1 to 4 carbon atoms or a hydrogen radical and the molecular weight of the (C2H4O-)x(C3H6O-)yR radical is 250 to 2,000 with x and y being selected so that the weight ratio of oxyethylene to oxypropylene is 100:0 to 20:80 (abstract). The preferred area of application of the W/O emulsion is in cosmetics (col. 2, lines 46-48).
As shown by Hüttinger, Budnik’s D” may be bonded next to Me2SiO with another polysiloxane polymer bonded on the other side. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have reversed the order of Dob and D”c of Budnik since reversing the order has no effect on surfactant formation and this is another known effective surfactant as taught by Hüttinger.
It would have been prima facie obvious to one of ordinary skill in the art to have used (C2H4O-)x(C3H6O-)yR, wherein R is an alkyl radical with 1 to 4 carbon atoms or a hydrogen radical as the polyether of Budnik since Budnik does not disclose what the polyether is and this is a known and effective polyether for surfactants as taught by Hüttinger. In regards to the claimed e and f values, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed e and f values depending on the particular molecular weight of the polyether desired as taught by Hüttinger.
It would have been prima facie obvious to one of ordinary skill in the art to have used the surfactant of Budnik in a W/O emulsion for cosmetics since similar surfactants comprising polysiloxane polymers with similar structure as the surfactant of Budnik are effective surfactants for a W/O emulsion for cosmetics as taught by Hüttinger.
Response to Arguments
Applicant argues that the terminal group of the polyether in the present invention is a hydrogen atom or an alkyl group. In this respect, the surfactant disclosed in Budnik differs from the surfactant of the present invention.
The Examiner does not find Applicant’s argument to be persuasive. A prior art reference is evaluated for all that it reasonably suggests and is not limited to working examples. Budnik does not require the polyether to be an acetoxy group (-OAc). As shown in claim 4, Budnik does not specify a specific polyether or mention an acetoxy group and Budnik discloses in col. 4, lines 48-50 that end caps other than acetoxy may be embodied in the invention. Furthermore, as this is a 103 obviousness rejection, no one piece of prior art is required to teach each and every claim limitation. As discussed in the rejection, the combined teachings of Budnik and Hüttinger teach the claimed surfactant. As such, Applicant’s argument is unpersuasive.
Applicant argues that the examples of Budnik do not disclose a specific molecular structure corresponding to the polyether defined by General Formula (2) of the present invention, nor do they disclose the performance of a silicone surfactant having such a polyether.
The Examiner does not find Applicant’s argument to be persuasive. As this is a 103 obviousness rejection, no one piece of prior art is required to teach each and every claim limitation. Thus, it is not necessary for Budnik alone to teach the claimed surfactant. The rejection states wherein the claimed surfactant would have been obvious from the combined teachings of Budnik and Hüttinger. Applicant has not explained why the claimed invention would not have been obvious from the combined teachings of Budnik and Hüttinger. As such, Applicant’s argument is unpersuasive and the rejection is maintained.
Applicant argues that the silicone surfactants specifically disclosed in Budnik are structurally different from the surfactant recited in present claim 1.
The Examiner does not find Applicant’s argument to be persuasive. As this is a 103 obviousness rejection, no one piece of prior art is required to teach each and every claim limitation. Thus, it is not necessary for Budnik alone to teach the claimed surfactant. The rejection states wherein the claimed surfactant would have been obvious from the combined teachings of Budnik and Hüttinger. Applicant has not explained why the claimed invention would not have been obvious from the combined teachings of Budnik and Hüttinger. As such, Applicant’s argument is unpersuasive.
Applicant argues that even if Hüttinger can be considered to disclose a polyether structure that could correspond to the polyether structure of General Formula (2) of the present invention, Hüttinger discloses the use of that polyether portion in combination with long-chain alkyl groups as an essential characteristic. There is no suggestion in Budnik or Hüttinger to select only the polyether portion while omitting the long-chain alkyl groups and incorporate that polyether portion into the silicone surfactant of Budnik having a cyclic polysiloxane group.
The Examiner does not find Applicant’s argument to be persuasive. The rejection states wherein the surfactant of Budnik is being modified. One of ordinary skill in the art would not incorporate the long-chain alkyl groups of Hüttinger into the surfactant of Budnik since Budnik defines all of its group except for the polyether. As discussed above, Budnik does not limit the polyether to a particular compound; therefore, it would have been obvious to one of ordinary skill in the art to have incorporated known and effective polyethers into the surfactant of Budnik. As such, Applicant’s argument is unpersuasive.
Applicant argues that surfactants having a structure represented by General Formula (I) and having a cyclic polysiloxane group in a side chain were compared with surfactants having a linear polysiloxane group in a side chain. The results demonstrate that the surfactants of the present invention provide an excellent interfacial-tension-reducing effect.
The Examiner does not find Applicant’s argument to be persuasive. The claimed subject matter must be compared with the closest prior art to be effective to rebut a prima facie case of obviousness. See MPEP 716.02(e). Budnik appears to be the closest prior art since Budnik discloses in col. 4, lines 1-3 wherein the surfactants contain cyclic siloxane pendants. Applicant compared the claimed invention with a surfactant having a linear polysiloxane group. Thus, since Applicant has not compared the claimed invention with the surfactant of Budnick, which appears to be the closest prior art, Applicant has not effectively rebutted a prima facie case of obvious. As such, Applicant’s argument is unpersuasive.
Applicant argues that the Examples demonstrate that the cosmetic containing the surfactant of the present invention provides a cosmetic having light extensibility without oiliness and tackiness, plain feel of use with wetness and freshness, extremely good makeup durability, and extremely excellent stability without change with temperature and time.
The Examiner does not find Applicant’s argument to be persuasive. As discussed above, the claimed subject matter must be compared with the closest prior art to be effective to rebut a prima facie case of obviousness. See MPEP 716.02(e). Since Applicant has not compared the claimed invention with the surfactant of Budnick, which appears to be the closest prior art, Applicant has not effectively rebutted a prima facie case of obvious. As such, Applicant’s argument is unpersuasive.
Conclusion
Claims 1-4 are rejected.
No claims are allowed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TRACY LIU/Primary Examiner, Art Unit 1614
