DETAILED ACTION
Status of Application
Preliminary amendments to the claims, filed 12/31/2024, are acknowledged. Claims 16-35 are pending in this action. Claims 1-15 have been cancelled. Claims 16-35 are currently under consideration.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . 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.
Priority
This application is a 371 of PCT/JP2023/009185, filed March 3, 2023, which claims benefit of foreign priority to JP2022-053331, filed March 29, 2022 and to FR2204052, filed Apryl 29, 2022. No English translations of the certified copies of both priority application(s) have been received. Failure to provide a certified translation may result in no benefit being accorded for the non-English application. 37 CFR 41.154(b) and 41.202(e).
Specification
The lengthy specification (34 pages, exclusive of claims) has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification. MPEP 608.01. The specification is objected to because of the following informalities:
The data provided in the specification are unclear, given that the data for dynamic viscosity are shown in “cSt“ units (e.g., Pages 2, 8-9, 34). To this point, it is noted that dynamic viscosity is measured in Pascal-seconds (Pa·s) or centipoise (cP), where 1 mPa·s = 1 cP, whereas kinematic viscosity is measured in square meters per second (m²/s) or centistokes (cSt), where 1 mm²/s = 1 cSt. Further, it is noted that said characteristics describe different fluid properties (see Wikipedia). Clarification is required.
The specification comprises references on foreign application and a publication (e.g., Pages 5-6, 14-16, 19). The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 37 CFR 1.57(g).
The use of the trademarks/trade names has been noted in this application (e.g., Pages 10-15). It should be capitalized wherever it appears and be accompanied by the generic terminology. Although the use of trademarks/trade names is permissible in patent applications, the proprietary nature of the trademarks/trade names should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as trademarks. The use of language such as “the product X (a descriptive name) commonly known as Y (trademark)” is not permissible since such language does not bring out the fact that the latter is a trademark. Language such as “the product X (a descriptive name) sold under the trademark Y” is permissible. MPEP §608.01(v). Further, it is noted that the trademarks/trade names are used to identify a source of goods, and not the goods themselves. The formula or characteristics of the product may change from time to time and yet it may continue to be sold under the same trademark/trade name. Thus, a trademark/trade name does not identify or describe the goods associated with the trademark/trade name. Appropriate correction is required.
The specification comprises acronyms without proper definition, e.g., “BJH” (Page 18). The acronym should be given once in parenthesis after the first use of the full term, and then the acronym used alone thereafter if needed. Appropriate correction is required.
Information Disclosure Statement
The information disclosure statements, filed 12/06/2024 and 03/25/2026, are acknowledged and have been considered. Please see the attached initialed PTO-1449.
Foreign language references listed in the information disclosure statement(s), for which no English translation has been provided, have not been considered. If an English abstract has been provided or available for a foreign language document then only the English abstract has been considered.
Claim Objections
Claims 16-19, 21-22, 24, 28-29, 32 are objected to because of the following informalities:
Claim 16 comprises the typographic error “one or more hydrophobic inorganic filler” that needs to be corrected to “one or more hydrophobic inorganic fillers” (see claims 17, 18).
Claims 17, 18 comprise the typographic error “fillers is selected” that needs to be corrected to “fillers are selected”. Similar is applied to claims 19, 21-22, 24, 28-29, 32.
Claim 19 comprises acronyms “MQ”. The acronym should be given once in parenthesis after the first use of the full term, and then the acronym is used alone thereafter if needed.
Appropriate correction is required.
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 16-35 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.
Claim 16 recites the limitation “one or more fillers comprising (i) one or more hydrophobic inorganic filler” that is not reasonably clear. Does this limitation disclose “a filler” as a mixture of compounds/fillers (i.e., comprising). Similar is applied to claim 35. Clarification is required.
Claim 16 recites the limitation “hydrophobic inorganic filler” that is unclear and indefinite, because it is unclear what filler should be used as the claim is broadly claiming the use of any type of hydrophobic inorganic compound(s). To this point, it is noted that “[i]f a claim is amenable to two or more plausible constructions, applicant is required to amend the claim to more precisely define the metes and bounds of the claimed invention or the claim is indefinite under §112, ¶ 2. Ex parte Miyazaki, 89 USPQ2d 1207 (BPAI 2008) (expanded panel).” Similar is applied to the limitations “lipophilic gelling agent” (claim 16), “organomodified clays” (claims 16, 32, 35), “hydrophobically-modified metal oxide” (claim 17), “hydrophobic silicas” (claim 18)”, “hydrophobic organic fillers” (claim 27), “hydrophobically-modified starches” (claim 28), “esterified starches” (claim 29), “organomodified” (claim 32). Clarification is required.
Claim 19 recites the limitation “silicone resins is chosen from MQ resins” that is not reasonably clear. To this point, it is noted that the instant specification does not provide a clear definition for the compounds to be used as “MQ resins”, but provides some examples of silicone resins of MQ type. Therefore, the scope of the claim is not clear. Therefore, clarification of compounds to be used in the instant invention is required.
Claim 22 (dependent on claim 16) recites the limitation “dynamic viscosity of 400,000 cSt” that is unclear. As stated above, a dynamic viscosity is measured in pascal-seconds (Pa·s) or centipoise (cP), whereas a kinematic viscosity is measured in square meters per second (m²/s) or centistokes (cSt). Therefore, it is unclear what viscosity is claimed/disclosed. Further, it is noted that “Claiming a result without reciting what materials produce that result is the epitome of an indefinite claim. Such a claim fails to delineate with any reasonable certainty the requirements of the formulation.” Forest Labs., Inc. v. Teva Pharms. USA, Inc. 2017 U.S. App. LEXIS 24877. Clarification is required.
Claims 20-21, 23-26, 30-31, 33-34 are rejected as being dependent on rejected independent claim 16 and failing to cure the defect.
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.
Claims 16-35 are rejected under 35 U.S.C. 103 as being unpatentable over Ebanks et al., FR 3113598 (cited in IDS, pub. date 03/04/2022, hereinafter referred to as Ebanks; Machine translation).
Ebanks teaches anhydrous cosmetic compositions for application to a keratinous material, e.g., to a skin, hair, eyelashes (Abstract; Filed of Invention; Discussion of context; Process for treating as applied to claims 16, 35), wherein said compositions may include:
(a) silicone resins, e.g., 2.5-30 wt% of MQ resins (Abstract; Discussion of context; Combination of silicone resins as applied to claim 16, 18, 20, 35);
(b) 0.01-90 wt% of silicone gum, e.g., polydimethylsiloxane, and/or having a viscosity from 1,000 cSt to 22,000,000 cSt (Compositions capable of forming a multilayer structure; Silicone compounds as applied to claims 16, 21-23, 35);
(c) isododecane, i.e., volatile hydrocarbon oil (Combination of silicone resins as applied to claim 16, 24, 35);
(d) hydrophobic silicas, i.e., hydrophobic inorganic fillers (Additional additives as applied to claim 16, 18, 35);
(e) lipophilic organomodified clays, e.g., hectorite modified with distearyldimethylammonium chloride, also known as disteardimonium hectorite and sold under the name Bentone 38 CE by Rheox (Additional additives as applied to claims 16, 32, 35).
Therefore, it is the position of the examiner that the claimed invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made/filed, because every element of the invention has been taught by the teaching of the reference cited. With regard to the concentrations as instantly claimed, it is noted that differences in experimental parameters such as concentration of compounds in a solution/formulation will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such parameter is critical. The prior art teaches formulations comprising the same components. The determination of suitable or effective concentration/composition can be determined by one of ordinary skill in the art through the use of routine or manipulative experimentation to obtain optimal results, as these are variable parameters attainable within the art. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. Claims 17, 27-29 are rejected as being dependent on rejected claim 16. Applicant is advised to clarify the structure of the compounds to be included to the claimed compositions and clearly point out the patentable novelty, which the applicant thinks the claims present in view of the state of the art disclosed by the reference cited, to place the application in condition for allowance.
Conclusion
No claim is allowed at this time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA V. TCHERKASSKAYA whose telephone number is (571)270-3672. The examiner can normally be reached 9 am - 6 pm, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert A. Wax can be reached at (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLGA V. TCHERKASSKAYA/
Examiner, Art Unit 1615
/Robert A Wax/Supervisory Patent Examiner, Art Unit 1615
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