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
Claim Rejections - 35 USC § 112, indefiniteness
The following is a quotation of 35 U.S.C. 112(b):
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 1-7 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 1 does not recite “C” in front of R1 are 2 or C3 in claim 1 which makes the claim indefinite as to what it is referring to. Appropriate correction is requested.
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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kuroda et al. (WO 2001/015658, presented in IDS; EP1213006 A1 for translation) in view of Martin et al. (FR 2861593 A1) and further in view of Patnode et al. (USP 2,469,888 A).
Kuroda et al. discloses a cosmetic that contains a branched organopolysiloxane represented by the general formula { (CH₃)3SiO}3SiCH₃ and a UV-ray protective component such as 2-ethylhexyl paramethoxycinnamate, etc. (claims), and indicates that the cosmetic further contains a wax such as ozokerite, ceresin or a microcrystalline wax, a higher alcohol such as stearyl alcohol or behenyl alcohol, and the like (p. 10, line 21 to p. 14, line 10, p. 20, lines 9-17). Kuroda et al. discloses multiple cosmetic compositions such as sunscreen compositions comprising a branched organopolysiloxane of formula (1) comprising only methyl alkyl groups (M3T, production examples 1 and 2 and claim 1) and an organic UV absorber such as ethylhexyl methoxycinnamate (ex. 6) or t-butylmethoxydibenzoylmethane (ex. 7,13) or a make-up composition comprising a wax such as polyethylene wax and beeswax (ex. 21) or an emulsion comprising a wax such cetanol or stearic acid (ex. 31). Said compositions have excellent durability, stability, feeling in touch, apply evenly and are non-sticky (par. [0115], [0118], [0136] and [0189]). Kuroda et al. teaches composition comprising branched organopolysiloxane and a wax having excellent cosmetic properties (see ex. 21, par. [0160] and ex. 31, par. [0189]). Accordingly, the skilled person would also include a solid oil component in the composition with the expectation of maintaining the cosmetic properties of said composition.
Kuroda et al. does not teach use of the branched organopolysiloxane comprising at least two ethyl or propyl monovalent alkyl group.
Martin et al. discloses sunscreen compositions comprising a branched organopolysiloxane comprising one ethyl or one propyl group (1,1,1,5,5,5-hexamethyl 3-propyl 3-[(trimethylsilyl)oxy] trisiloxane and 3-ethyl 1,1,1,5,5,5-hexamethyl 3-[(trimethylsilyl)oxy] trisiloxane in claim 11 with reference to claim 1) and an organic UV filter. Claim 29 discloses UV filters such as ethylhexyl methoxycinnamate, ethylhexyl salicylate, benzophenones or octocrylene. The compositions have improved qualities of spreading, softness and non-tacky feeling upon application due to the use of the silicone fatty phase (p. 1, I. 14-18, cl. 42, p. 2, I. 32-38, p.3, I. 10-14). Martin seems to represent the closest prior art because it concerns sunscreen composition comprising a UV filter or a branched organopolysiloxane having at least one ethyl or propyl monovalent alkyl group and exhibiting good cosmetic usability and stability. Martin envisages the possibility to have further C1 to C10 alkyl group in the branched organopolysiloxane (p. 4, I. 28-40).
Patnode et al. discloses branched organopolysiloxane. The exemplified molecules only comprise methyl substituents. In addition, the reference discloses branched organopolysiloxane wherein R can be selected from ethyl or propyl (col. 1, I. 10-14 and col. 1, I. 34 - col. 2, I. 14). Patnode makes a disclosure of branched siloxane molecules bearing various alkyl and aryl substituents. See 03, column 1, line 1 - line 44; Example 2. Potential substituent groups include ethyl and propyl radicals corresponding to C2 and C3 alkyl groups of claim 1. Since the application attaches no specific significance to the choice of C2 or C3 alkyl groups, and since it is considered a routine modification to substitute a methyl substituent with an ethyl or propyl substituent in a siloxane molecule, a skilled person would have envisaged using a branched organopolysiloxane comprising more 2 or more ethyl or propyl group in view of the prior art at hand and still expect to maintain the excellent cosmetic properties of the composition.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over
Kuroda et al. ((WO 2001/015658, presented in IDS; EP1213006 A1 for translation)),
in view of Satoshi et al. ((JP 2002-265478 A ((SHIN-ETSU CHEMICAL CO., LTD.) 18
September 2002 (2002-09-18), claims, paragraphs [0002], [0020] & US 2002/0133035
Al, claims, paragraphs [0002], [0015] & EP 1241171 Al)) and Auguste et al. ((US
2004/0197284 A, claims, paragraphs [0199], [0203] & FR 2853227 A & WO
2004/087077 Al)).
Kuroda et al. discloses a cosmetic that contains a branched organopolysiloxane represented by the general formula { (CH₃)3SiO}3SiCH₃ and a UV-ray protective component such as 2-ethylhexyl paramethoxycinnamate, etc. (claims), and indicates that the cosmetic further contains a wax such as ozokerite, ceresin or a microcrystalline wax, a higher alcohol such as stearyl alcohol or behenyl alcohol, and the like (p. 10, line 21 to p. 14, line 10, p. 20, lines 9-17). Kuroda et al. discloses multiple cosmetic compositions such as sunscreen compositions comprising a branched organopolysiloxane of formula (1) comprising only methyl alkyl groups (M3T, production examples 1 and 2, claim 1) and an organic UV absorber such as ethylhexyl methoxycinnamate (ex. 6) or t-butylmethoxydibenzoylmethane (ex. 7,13) or a make-up composition comprising a wax such as polyethylene wax and beeswax (ex. 21) or an emulsion comprising a wax such cetanol or stearic acid (ex. 31). Said compositions have excellent durability, stability, feeling in touch, apply evenly and are non-sticky (par. [0115], [0118], [0136] and [0189]). Kuroda et al. teaches composition comprising branched organopolysiloxane and a wax having excellent cosmetic properties (see ex. 21, par. [0160] and ex. 31, par. [0189]). Accordingly, the skilled person would also include a solid oil component in the composition with the expectation of maintaining the cosmetic properties of said composition.
The reference does not teach use of the branched organopolysiloxane comprises at least two ethyl or propyl monovalent alkyl group.
Satoshi et al. discloses a branched organopolysiloxane in which R in general
formula (3) is hydrogen or a monovalent hydrocarbon group having 1-20 carbon atoms, etc. (claims), and indicates that said low molecular weight organopolysiloxane was difficult to synthesize, but can be easily synthesized by using a production method disclosed in Satoshi et al. (paragraphs [0002]-[0004], [0011]).
Therefore, a person skilled in the art could, upon referring to document by Satoshi et al., easily have conceived of synthesizing and using a branched organopolysiloxane set forth in instant claim 3 of the present application in the invention disclosed in Kuroda et al. and Satoshi et al. JP’478 et al.
Auguste et al. discloses a cosmetic that contains a branched organopolysiloxane represented by general formulae (11)-(III) (claims), discloses
3-ethyl-1,l,1,5,5,5-hexamethyl-3-[(trimethylsilyl)oxy]trisiloxane, etc. (claim 29) and
l,l,1,3,5,7,7,7-octamethyl-3,5-bis[(trimethylsilyl)oxy]tetrasiloxane, etc. (claim 31) as examples of this branched organopolysiloxane, and discloses further blending a sunscreen agent, a wax, a C8-C26 higher alcohol, and the like (paragraphs [0199], [0203]). Therefore, comparing the invention as in the above-mentioned claims of the present application with the invention disclosed in Auguste, there is no difference between these two inventions in terms of invention-defining features.
Therefore, the invention as in the above-mentioned claims of the present application is either disclosed in Auguste or could have been easily invented by a person skilled in the art on the basis of the invention disclosed in Auguste et al. Since the application attaches no specific significance to the choice of C2 or C3 alkyl groups, and since it is considered a routine modification to substitute a methyl substituent with an ethyl or propyl substituent in a siloxane molecule, a skilled person would have envisaged using a branched organopolysiloxane comprising more 2 or more ethyl or propyl group in view of the prior art at hand and still expect to maintain the excellent cosmetic properties of the composition. 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.
Nonstatutory double patenting rejection
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/851498 (reference application) in view of Kuroda et al. (WO 2001/015658, presented in IDS; EP1213006 A1 for translation). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims recite a cosmetic comprising one or more branched organopolysiloxanes represented by formula (1). The copending claims recite a branched organopolysiloxane of formula (1) which reads on the instant organopolysiloxane in a cosmetic. Kuroda et al. teach cosmetic preparation comprising organopolysiloxane. Therefore, it would have been obvious to one of ordinary skill to have utilized the copending organopolysiloxane into a cosmetic composition based on the teachings of Kuroda et al.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SNIGDHA MAEWALL whose telephone number is (571)272-6197. The examiner can normally be reached Monday thru Friday; 8:30 AM to 5PM.
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/SNIGDHA MAEWALL/Primary Examiner, Art Unit 1612
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