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 .
Claim Status
Claims 1-13 are rejected.
No claims are allowed.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. JP2022-130099, filed on 17-Aug-2022.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 13-Feb-2025 has been considered by the examiner.
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.
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.
Claim 1 and 7 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Both claims 1 and 7 recite the limitation “normal condition” but fail to describe in either the claim or specification what constitutes as normal condition.
Claim 9 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 9 recites “wherein the volatile oil” and recites ethanol. While ethanol is volatile, it is an alcohol, and not an oil.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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.
Claim(s) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abe et al. (US 11,912,828 B2, Publication: 16-Jan-2020) (hereinafter Abe), and further in view of Hasegawa et al. (JP2009052038A, Published 31-Jul-2009) (hereinafter Hasegawa).
With regards to claims 1, 7, and 13, Abe teaches a cosmetic comprising a crosslinked organosilicone resin formed by an addition reaction between a hydrosilyl group: “Specifically, the crosslinked organosilicone resin represented by the average composition formula (1) is obtained by hydrosilylating a hydrosilyl group-containing organosilicone resin represented by the following average composition formula (13) and being solid or liquid at 25 degrees C. with at least one of terminal alkenyl group-containing compounds represented by the following formula (11), (12), (14), (15), (16), (17), (18) or (19), with the proviso that the compound (11) is essential. The hydrosilylation may be conducted in the presence of a platinum catalyst or a rhodium catalyst.
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wherein R 1 is, independently of each other, a substituted or unsubstituted, monovalent hydrocarbon group having 1 to 30 carbon atoms and having no aliphatic unsaturated bond; al, a2, a3, a4, b, c, and d satisfy the equations, 0<a1≤400, 0≤a2≤200, 0≤a3≤400, 0<a4≤50, 0≤b≤320, 0≤c≤320, 0<d≤l,000, and 0.5≤(al+a2+a3+a4)/d≤l.5, and p is an integer of l≤p≤3” (Col 8, line 60 to Col 9, line 12).
Further, Abe discloses a terminal alkenyl group containing compound: “molar ratio of the hydrosilyl group to the terminal unsaturated group is preferably from 0.5 to 2.0, more preferably from 0.8 to 1.2” (Col 9, line 65-67).
Abe’s resultant crosslinked resin, formula (1), recites “a crosslinked organosilicone resin represented by the following average composition formula (1): (R13SiO1/2)a1(R23SiO1/2)n2(R33SiO1/2)n3(R13-p(X1/2)pSiO1/2)a4(R12SiO2/2)b(R1SiO3/2)c(SiO4/2)d wherein R1 is, independently of each other, a substituted or unsubstituted, monovalent hydrocarbon group having 1 to 30 carbon atoms and having no aliphatic unsaturated bond, R2 is, independently of each other, a polyoxyalkylene containing group, a polyglycerin-containing group, or a group selected from the groups defined for R 1 and at least one of R2 in each of the R2 3SiO1/2 units is a polyoxyalkylene-containing group or a polyglycerin-containing group, R3 is, independently of each other, an organopolysiloxane-containing group or a group selected from the groups defined for R1 and at least one of R3 in each of the R3 3 SiO1/2 units is an organopolysiloxane-containing group, X is a divalent group represented by the following formula (2) or (3)” (Col 3, line 14-31) and “optionally, a part of R2, R3 and X may be a hydroxyl group, al, a2, a3, a4, b, c, and d satisfy the equations, 0<a1≤400, 0≤a2≤200, 0≤a3≤400, 0<a4≤50, 0≤b≤320, 0≤c≤320, 0<d≤l,000 and 0.5≤(al+a2+a3+a4)/d≤l.5 and p is an integer of l≤p≤3 (Col 3, line 50-55).
Abe also discloses the residual reactivity of the silicone resins as “hydrogen gas generation” in mL/g (Col 27, line 59-60), and Abe discloses that “The addition reaction may be followed by a step of diminishing any remaining hydrosilyl group, if needed. Specifically, when the resin is used in a cosmetic, the step of diminishing a hydrosilyl group is preferably carried out, because the hydrosilyl group may cause dehydrogenation, which is problematic in view of safety” (Col 10, line 41-46). Abe disclose in Example 1 “250 g of ethanol, 5 g of a 5% aqueous solution of sodium hydroxide was added to hydrolyze unreacted hydrosilyl groups” (Col 28, line 1-3) to effectively control residual hydrogen generation.
Further, Example 1 (Col 27, line 57 to Col 28, line 3) discloses the inherent result of hydrogen gas ≤ 1.5 mL/g or 0.01 to 1.2 mL/g:
Potential H2 = 1000g organosilicone resin*50% purity*9.1mL/g hydrogen gas/22400 mL/mol (at STP) = 0.2 mol product
5g of 5% aqueous NaOH = 5g NaOH*5%/40g/mol = 0.25/40 = 0.00625g/mol NaOH
Residual hydrogen generation = 0.00625mol * 22400mL/mol = 140 mL of H2
Total product mass = 500g resin + 98.6g organopolysiloxane = 598.6 g
140 mL/598.6g = 0.234 mL/g hydrogen generation of the product
The value of 0.234 mL/g of hydrogen is within the claimed range of ≤ 1.5 mL/g or 0.01 to 1.2 mL/g of the instant claim, further supporting Abe’s early disclosure on attenuating hydrogen generation.
However, Abe does not teach that the alkenyl functionality of the terminal crosslinking compound and the SiH functionality on the resin, rather the reverse where Component A of the instant claim is the alkenyl resin and Component B is the SiH crosslinker. For this reason, Hasegawa is added.
Hasegawa teaches a curable silicone composition cured by a hydrosilylation addition reaction but with Component A designated as an alkenyl group containing organopolysiloxane that comprises a mixture of resinous alkenyl functional organopolysiloxane of embodiment A-2: “(A-2) SiO4/2 unit, R12R2SiO1/2 unit and R13SiO1/2 unit (wherein R1 is an alkyl group having 1 to 10 carbon atoms, R2 is an alkenyl group) containing 3.5 to 5.0% by mass of alkenyl group, and the ratio of the total number of moles of R12R2SiO1/2 units and R13SiO1/2 units to 1 mole of SiO4/2 units is 0 Resin-like alkenyl group-containing organopolysiloxane in the range of [0.]5 to 1.4” (Page 1, last paragraph to Page 2, first paragraph). Hasegawa discloses that Component B is “silicon atom bonding Organopolysiloxane having at least 0.7% by mass of hydrogen atoms and a group bonded to silicon atoms other than silicon-bonded hydrogen atoms is an alkyl group having 1 to 10 carbon atoms {silicon-bonded hydrogen in this component The amount of the atom is 0.5 to 5 moles per 1 mole of the total of alkenyl groups of the component (A)”, which is within the instant claimed 0.5-1.2 range.
It would have been obvious to one of ordinary skill in the art to modify Abe’s cosmetic resin by adapting Hasegawa’s disclosed arrangement of reactive functionalities by assigning the alkenyl groups to the resinous component A and the hydrosilyl groups to the crosslinking component B, because a person having ordinary skill in the art would have recognized that from Hasegawa’s teachings, that the placement of the vinyl and SiH functional groups between the identified resin and crosslinker members of a hydrosilylation pair is interchangeable design choice for producing equivalent -C-Si bonded crosslinks. This modification is made to produce a crosslinked organosilicone resin cosmetic ingredient having the claimed structure where the alkenyl resin of Component A is reacted with the SiH crosslinker of Component B at an SiH to Alkenyl mole ratio of 0.5 to 1.2.
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 combine Abe’s cosmetic crosslinked organosilicone resin platform and reaction stoichiometry with Hasegawa’s alkenyl resin/SiH crosslinker functional arrangement to arrive at the claimed cosmetic preparation and production methodology. For the foregoing reasons, Claims 1 and 13 are rendered obvious by the teachings of the prior art.
With regards to claim 2, Abe discloses the following formulas:
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Wherein “The organopolysiloxane-containing group for R3 is a group represented by the following formula (6), (7), (8), or (9). In each of the R3 3 SiO1/2 units, at least one of R3 is a group represented by the following formula (6), (7), (8) or (9). wherein R 6 is, independently of each other, a substituted or unsubstituted, monovalent hydrocarbon group having 1 to 30 carbon atoms and having no aliphatic unsaturated bond; n and i are integers satisfying equations, 0≤n≤5 and 0≤i≤500; and j1 to j3 are integers of 0 to 2. R6 is, independently of each other, a substituted or unsubstituted, monovalent hydrocarbon group having 1 to 30 carbon atoms, preferably 1 to 10 carbon atoms. Examples of R6 include alkyl groups, aryl groups, and aralkyl groups, and these groups wherein a part of the hydrogen atoms bonded to carbon atoms is replaced with a halogen atom, an amino group, or a carboxyl group. More specifically, preferred are alkyl groups, aryl groups, aralkyl groups, fluorine-substituted alkyl groups, chloro-substituted alkyl groups, amino substituted alkyl groups, and carboxyl-substituted alkyl groups. Specific examples include methyl group, ethyl group, propyl group, butyl group, pentyl group, cyclopentyl group, cyclohexyl group, phenyl group, tolyl group, trifluoropropyl group, heptadecafluorodecyl group, chloropropyl group, and chlorophenyl group. Among these, alkyl groups having 1 to 5 carbon atoms, a phenyl group and a trifluoropropyl group are more preferred. In the formulas, n satisfies the equation, 0≤n≤5, preferably 0≤n≤2; i satisfies the equation, 0≤i≤21500, preferably 1≤i≤l00, more preferably 1≤i≤50. If i is larger than 500, the resulting resin has a lower melting temperature and lacks a film forming property. In the formulas, j 1 to j3 are integers satisfying the equation, 0≤j1-3≤2” (Col 6, line 14-56).
With regards to claim 3, Abe discloses Example 1, wherein Formula (E1) contains b = 0 and c = 0 of the instant claim (Col 28, line 13):
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With regards to claim 4, Abe discloses formula (22), wherein contains g = 0 and h = 0 of the instant claim (Col 13, line 23):
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Further disclosing “Examples of the hydrosilyl group-containing organosilicon compounds represented by the formula (22) include 1,1,3,3-tetramethyldisiloxane and 1,1,1, 3,3-pentamethyIddichloropropyldiethoxysilane” (Col 13, line 65 to Col 14, line 1).
With regards to claim 5, Abe discloses that the “crosslinked organosilicone resin of the present invention preferably has a weight average molecular weight of 15 from 1,000 to 1,000,000, more preferably from 1,000 to 500,000, more preferably from 3,000 to 300,000” (Col 8, line 13-16).
With regards to claim 6, Abe discloses formula (2) (Col 6, line 60-65):
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“In the formula (2), e satisfies 0≤e≤500, preferably 0≤e≤l00, more preferably 0≤e≤50. If e is larger than the upper limit, a resin has a lower melting temperature and lacks a film forming property” (Col 7, line 29-32) and “The crosslinked organosilicone resin represented by the average composition formula (1) in which at least one of X is a group represented by the formula (2), a4 satisfies the equation, 0<a4≤5, and e in the formula (2) is an integer satisfying the equation, 0<e<40, is solid at 25 degrees C. and is excellent in film forming property” (Col 8, line 23-28).
With regards to claim 8-9, Abe discloses “Volatile oils having a boiling temperature of 240 degrees C. or less are preferred in consideration that a film is formed from the resin and exhibits its effect soon after application of the cosmetic. Particularly, silicone oils, isododecane, and ethanol are preferred” (Col 18, line 65 to Col 19, line 3) and that the “crosslinked organosilicone resin that has a crosslinked structure formed by reacting a silicone or hydrocarbon having an alkenyl group at both ends thereof with a hydrosilyl group-containing organosilicone resin, is soluble with a liquid oil at room temperature, and forms a film by volatilization of the oil” (Abstract).
With regards to claim 10-11, Abe discloses “The crosslinked organosilicone resin (A) of the present invention may be used in a variety of applications, particularly as a raw material for cosmetics externally applied to the skin or hair (i.e. as a sunscreen cosmetic preparation or a makeup cosmetic preparation). The amount of the crosslinked organosilicone resin (A) is preferably in a range of from 0.1 to 40 mass%, more preferably from 0.1 to 10 mass%, based on a whole mass of a cosmetic” (Col 18, line 50-56).
With regards to claim 12, Abe discloses “The cosmetics may be either an emulsion one or a nonaqueous one… A nonaqueous composition or powder composition may be selected for providing the skin with an oily feel or water resistance” (Col 27, line 10-16).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENHAN LI whose telephone number is (571)272-9143. The examiner can normally be reached Monday-Friday 7:30 am-5 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/W.L./Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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