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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on January 23, 2025, and August 6, 2026, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Status
Claims 20 – 58 and 60 are cancelled.
Claims 1 – 19 and 59 are examined here-in.
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.
Claims 1 – 19 and 59 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claims 1, 2, and 19, the phrase "i.e." renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 15 recites the broad recitation polyoxyethylene/polyoxypropylene copolymer, and the claim also recites PEG/PPG-18/18 dimethicone which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
Claim 13 is shown below. There is insufficient antecedent basis for the recitation of R groups 1a – 1i, 2a – 2h, 3a – 3i, 4a – 4h, and 5a – 5h in the claim. Claim 1 from which it depends does not set out the inclusion of any R groups, let alone the specific R groups 1a – 1i, 2a – 2h, 3a – 3i, 4a – 4h, and 5a – 5h.
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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 non-obviousness.
Claims 1 – 19 and 59 are rejected under 35 U.S.C. 103 as being unpatentable over Yu (US 2018/0296591 A1).
Yu teaches a composition with reinforcing and crosslinking components that forms a safe, flowable polymer emulsion system which becomes an invisible, breathable, elastic, occlusive film for the skin (abstract, paragraph 0114).
Yu teaches the reinforcing compound has reactive groups that will react with the crosslinking component (paragraphs 0171 – 0173). Yu teaches the reactive constituent includes at least one polysiloxane group (paragraphs 0174 – 0209, 0217).
Yu teaches an organopolysiloxane with vinyl moieties at the terminal caps, as well as organopolysiloxanes with vinyl moieties pendant to the monomer units (paragraph 0210, 0218, 0224). Yu teaches trimethylsiloxy terminated vinymethylsiloxane-dimethylsiloxane copolymer as an organopolysiloxane compound suitable for the composition (paragraph 0225).
Yu teaches that a combination of high viscosity and low viscosity vinyl organopolysiloxane in a bimodal distribution with a ratio of 3:1 (paragraph 0227). Yu teaches the low viscosity organopolysiloxane has a viscosity of between 100 and 5,000 cSt at 25 degrees Celsius (paragraph 0236).
Yu teaches the reactive constituent comprises at least one hydride functionalized polysiloxane, where the Si-H units may be at the terminal end caps, the monomer units, or both (paragraphs 0245 – 0248). Yu teaches that a reaction between one or more organopolysiloxanes and the hydride functionalized polysiloxane causes condensation of the components so that a film is formed on the skin (paragraph 0268).
Yu teaches the reactive constituent comprises combinations of high molecular weight vinyl organopolysiloxanes, low molecular weight vinyl organopolysiloxanes, and hydride-functionalized organopolysiloxanes (paragraph 0256).
Yu teaches the crosslinking component is a metal catalyst such as a platinum, rhodium, or tin catalyst (paragraphs 0106 – 0107, 0270).
Yu teaches the composition includes non-reactive constituents that are organopolysiloxanes without vinyl or hydride groups, such as volatile siloxanes, emulsifiers, surfactants, pigments, cosmetic agents, or therapeutic agents, among others (paragraphs 0286 – 0289).
Yu does not teach a specific embodiment having each of the claimed elements, however, claims 1 – 19 and 59 are rendered prima facie obvious over the teachings of Yu, because it is prima facie obvious to combine prior art elements according to known methods, in order to yield predictable results (MPEP 2143(i)(a)). In the instant case, all the claimed elements (e.g., organopolysiloxanes, vinyl-terminated, hydride-terminated, platinum catalysts) were known in the prior art (e.g., compositions for the skin containing silicones) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (e.g., a film-forming silicone composition for the skin) to one of ordinary skill in the art.
Yu’s teaching for composition with reinforcing and crosslinking components that forms a film on the skin (abstract) with a combination of organopolysiloxanes, including trimethylsiloxy terminated vinylmethylsiloxane-dimethylsiloxane copolymer, a hydride functionalized organopolysiloxane, a low viscosity organopolysiloxane, a non-reactive polysiloxane, and a platinum catalyst (paragraphs 0210, 0217 – 0218, 0224 – 0225, 0227,0245 – 0248, 0256, 0270, 0286 – 0289) reads on instant claim 1.
Yu teaches hydride functionalized polysiloxane with different terminal caps, including trimethylsiloxy terminated polymethylhydroxysiloxane (paragraphs 0248, 0254), reading on instant claim 2.
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[AltContent: textbox (Trimethylsiloxy terminal )][AltContent: textbox (Trimethylsiloxy terminal )][AltContent: textbox (A1)]Yu’s teaching for trimethylsiloxy terminated vinylmethylsiloxane-dimethylsiloxane copolymer as an organopolysiloxane compound suitable for the composition (paragraph 0225) reads on claims 3 and 13.
Yu’s teaching for at least one hydride functionalized polysiloxane, where the Si-H units may be at the terminal end caps, the monomer units, or both (paragraphs 0245 – 0248) reads on instant claims 4 and 13.
Yu’s teaching for an organopolysiloxane with vinyl moieties at the terminal caps, as well as organopolysiloxanes with vinyl moieties pendant to the monomer units, such as vinyl terminated vinylmethylsiloxane-dimethylsiloxane copolymer (paragraph 0210, 0218, 0224 – 0225) reads on instant claims 5 and 13.
Yu’s teaching for trimethylsiloxy terminated polymethylhydroxysiloxane (paragraphs 0248, 0254) reads on instant claims 6 and 13, because only one of R4d or R4e would be H, and R4a, R4b, R4c, R4f, R4g, and R4h would be methyl groups.
Yu’s teaching that the metal catalyst is platinum-based, with Karstedt’s catalyst as an example (paragraphs 0270, 0452, 0711) reads on claims 7 – 9.
Yu’s teaching for non-reactive organopolysiloxanes without vinyl or hydride groups, such as volatile siloxanes, with examples of dimethicone and trisiloxane, decamethylcyclopentasiloxane, and dimethylpolysiloxane (paragraphs 0286 – 0289, 0346, 0376) reads on instant claims 10 – 12 and 13.
Yu’s teaching that the composition comprises one or more additives such as emulsifiers, surfactants, and thickeners, among others (paragraph 0286) reads on instant claim 14.
Yu’s teaching for fumed silica with hexamethydisilazane and cetyl PEG/PPG-10/1 dimethicone (paragraph 0346) and several examples including glycerin (paragraph 0376, 0409, 0413) reads on claim 15.
Yu teaches the composition has a viscosity in the range of 5,000 to 1,000,000 cSt (paragraphs 0039 – 0040, 0058 – 0059, 0077 – 0078) which overlaps on the instantly claimed range of 4,000 to 100,000 cSt as recited in claim 16. Claimed ranges that overlap teachings of the prior art are prima facie obvious according to MPEP 2144.05(i).
Yu’s teaching that the composition has a viscosity in the range of 5,000 to 1,000,000 cSt (paragraphs 0039 – 0040, 0058 – 0059, 0077 – 0078) overlaps on the claimed ranges of 4,000 to 8,000 cSt and 30,000 to 50,000 cSt as recited in claim 17. Claimed ranges that overlap teachings of the prior art are prima facie obvious according to MPEP 2144.05(i).
Yu teaches a vinyl to hydride ratio of 1:4 to 1:100 (paragraphs 0023, 0042, 0061, 0080, 0097, 0266), which is a hydride to vinyl ratio of 4:1 to 100:1, which can be rewritten as 1 : 0.25 to 1 : 00.1. A hydride to vinyl ratio in the range of 1 : 0.25 to 1 : 00.1 overlaps on the claimed range of 0.01 to 0.8 as recited in claim 18.
Although Yu does not teach a hydride to vinyl ratio of 0.4 to about 0.6, a person of ordinary skill in the art would have the necessary expertise to determine this range via routine experimentation. First, a person of ordinary skill in the art would recognize that more H groups than vinyl groups would ensure that each of the vinyl groups reacts, in other words, would ensure maximum crosslinking of the vinyl groups present. Next, a person of ordinary skill in the art would recognize that a hydride to vinyl ratio of 0.4 to 0.6 is approximately 2 hydrides per vinyl group, thus the reaction would be expected to go to completion with remaining unreacted hydrides. A two to one stoichiometric ratio of hydrides to vinyl groups balances molecular and economic efficiency with saturation of the reaction. Therefore, the range hydride to vinyl ratio of 0.4 to 0.6 as recited in claim 19 is prima facie obvious according to MPEP 2144.05(ii).
Yu’s teaching for a composition with reinforcing and crosslinking components that forms a safe, flowable polymer emulsion system (abstract, paragraph 0114) reads on instant claim 59. In formulation 83-54, Yu teaches the inclusion of 20 to 60% water, up to 5% Tween 20 (emulsifier), and 10 to 40% PMX-1184 (silicone fluid) (paragraph 0445), overlapping on the claimed ranges of 50 to 99% polar solvent, 0.1 to 10% emulsifier, and 1 to 25% silicone fluid as recited in claim 59. Claimed ranges that overlap teachings of the prior art are prima facie obvious according to MPEP 2144.05(i). Although Yu does not explicitly teach the inclusion of 1 to 25% telechelic polymer composition (in formulation 83-54 Yu includes 30 to 60% polymer composition), a person of ordinary skill in the art would be motivated to include an amount in the range of 1 to 25% to create a more flowable emulsion than that of 83-54. It is within the skill of an ordinary artisan to optimize the amount of telechelic polymer composition through routine experimentation, which is prima facie obvious according to MPEP 2144.05(ii).
Conclusion
All claims are rejected. No claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Toriana N. Vigil whose telephone number is (571)270-7549. The examiner can normally be reached Monday - Friday 9:00 a.m. - 5:00 p.m. EST.
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/TORIANA N. VIGIL/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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