DETAILED ACTION
Status of the Claims
Claims 1-14, 18-21 and 24-25 are pending in this application.
Claims 1-14, 18-21 and 24-25 are under examination.
Notice of Pre-AIA or AIA Status
The present application, filed on or after 01/26/2026, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/26/2026 has been entered.
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 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.
Claims 1-14, 18-21 and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Pays et al. (US 2006/0216257 A1, pub. Sep. 28, 2006) evidenced by Fernandes (WO 2019/122102 A1, 06/27/2019).
Pays et al. disclose a kit for making up and/or caring for skin, lips and/or keratin fibers, comprising: a cosmetic composition having an oily continuous phase comprising at least one polyelectrolyte; and an aqueous composition (claim 1). This language reads on water-in-oil emulsion of the instant claims. The invention relates to the making up of keratin fibers, for instance the eyelashes, and more particularly to making up the eyelashes (¶ [0003]). The makeup kit according to the invention may be in the form of a makeup kit or a treatment for the eyelashes; more especially, the invention relates to a mascara (¶ [0004]). The kit is in a form for dispensing a mascara (claim 24). Compositions for making up keratin fibers and especially the eyelashes comprise a liquid fatty phase (oils) containing an oily structuring agent, which may be a wax, a polymer, in particular a semi-crystalline polymer, or a lipophilic gelling agent (¶ [0005]). Here the language reads on a composition for eyelashes recited in instant claim 1 as well as the recited “mascara” of instant claim 11. Regarding claim 12, the limitation “applying the composition to eyelashes” is inferred from the form of the composition is in mascara form.
Regarding the film-forming component, Pays et al. teach that the aqueous composition comprising an amount of water and/or of water-soluble solvent that is sufficient to generate, when placed in contact with the cosmetic composition, the swelling of this composition as mentioned above (¶ [0087]) and may contain film-forming polymer, Syntran 5760 (¶ [0093], [0272]).
Regarding claims 2-3 and 21 (i.e., styrene/acrylates/ammonium methacrylate copolymer), Pays et al. disclose Syntran 5760 (¶ [0093], [0272]). Since it is the same polymer as that instantly taught (see Spec. ¶ [0039]), they would inherently share the same properties, i.e. glass transition and latex of colloidal dispersion of particles. It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to use the polymer taught by Pays et al. with expected results. As such, the teach glass transition temperature of from 0°C to about 90°C limitation is met.
Pays et al. teach that the oily continuous phase comprises at least 10% by weight, preferably at least 15% by weight and better still at least 20% by weight of solids of at least one film-forming polymer, relative to the total weight of the composition (¶ [0277]) and that the aqueous composition comprises at least 10% by weight and preferably at least 15% by weight of solids of an aqueous dispersion of at least one film-forming polymer, relative to the total weight of the composition (¶ [0278]).
Pays et al. disclose that the cosmetic composition comprises a film-forming polymer that may be a polymer dissolved in the oily phase comprising oils or organic solvents (in which case the film-forming polymer is referred to as a liposoluble polymer) (¶ [0234]). Liposoluble film-forming polymers are liposoluble copolymers which result from the copolymerization of alkyl acrylates or methacrylates (¶ [0238]). Liposoluble film-forming polymers that may be used include silicone resins which are generally soluble or swellable in silicone oils; cross-linked polyorganosiloxane polymers (¶ [0242]).
Regarding claims 4, 14 and 19, Pays et al. teach polymethylsilsesquioxane resins (¶ [0243]) and siloxysilicate resins, specifically trimethyl siloxysilicate (TMS) resins (¶ [0246]).
Regarding the wax limitation present from about 10-25% by weight of the total weight of the composition of claim 5 and element (c) of claim 14, the cosmetic composition included in the makeup kit may comprise at least one agent for structuring the oily phase or organic solvent, chosen from waxes, semi-crystalline polymers and lipophilic gelling agents, and mixtures thereof (¶ [0148]). The structuring agent may represent from 0.1% to 80% by weight relative to the total weight of the composition (¶ [0149]). The cosmetic composition may comprise a content of waxes ranging from 0.1% to 70% by weight relative to the total weight of the cosmetic composition (¶ [0185]).
Regarding claim 6, Pays et al. teach dyestuff (¶ [0290]) to read on colorant.
Regarding claim 7, Pays et al. teach modified clays (hectorites modified with a C10 to C22 fatty acid ammonium chloride or with distearyldimethylammonium chloride) (¶ [0218]) to read on the claimed silicate clay.
It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to add colorant and silicate clay in the base composition of Pays et al. for the following reasons. Pays et al. teach that the volumizing effect may advantageously become apparent via a swelling effect of the eyelashes (¶ [0031]). This swelling effect is all the more apparent when the cosmetic composition in accordance with the invention is deposited first and the aqueous composition is deposited second, and when the cosmetic composition in accordance with the invention contains dyestuffs and the aqueous composition is advantageously transparent or translucent (¶ [0031]). In this case of making up the eyelashes, swelling of the coat on the eyelashes may thus be seen with the naked eye, as soon as the aqueous composition has been deposited (¶ [0031]). In other words, the cross section of the coated eyelash, after applying the aqueous composition, increases compared with the cross section of the eyelash coated only by applying the cosmetic composition (¶ [0031]). Hectorite is a lipophilic gelling agent to provide structure to the oily phase (¶ [0218]). One skilled in the art would be motivated to add these ingredients to the composition because they would contribute to the making up and coating of the lashes to obtain the desired volumizing effect. As evidenced by Fernandes, such pigment and minerals for surface chemistry reasons allow these ingredients to superpose (pg. 40, line 31]) echoing the superposition of coats as taught by Pay et al. (¶ [0010], [0354]).
Regarding claim 8 (i.e., siloxysilicate resin 1-10%), considering the above teachings of TMS and percent by weight ranges, the teachings of Pays et al. meet the limitation.
Regarding claims 9-10 and claims 18-19, Pays et al. teach that the resin is at least 10%, 15% and 20% (¶ [0277-0278]) and that the polymer comprising a styrene is from 0.1-80%, 0.5-50%, and 1-40% (¶ [0148-0149], [0211-0212]). Here the prior art teaches resin to polymer ratio values that fall within the claimed ranges, for instance 10% resin to 10% polymer is a 1:1 ratio; 10% resin to 5% polymer is a 2:1 ratio.
It would have been prima facie obvious to a person of ordinary skill in the art, to add Syntran 5760 and TMS in the instantly claimed amounts to the base composition of Pays et al., with the instantly claimed ratio of Syntran 5760 to TMS with expected results for the following reasons. The presence of film-forming polymer especially Syntran 5760 makes it possible to limit the water evaporation and thus to improve the durability of the desired volumizing effect (¶ [0092-0093]). As evidenced by Fernandes, a silicone resin (expressed as solids)/film-forming polymer (expressed as solids) weight ratio greater than or equal to 1, preferably greater than 1 and even more advantageously greater than or equal to 2, avoids excessive tack, increases color persistence and improves transfer-resistance properties tackiness (pg. 7, lines 33-38).
It would have been prima facie obvious to a person of ordinary skill in the art, ahead of the effective filing date of the claimed invention, to add a wax and clay to the base composition of Pays et al. and to add the wax in the instantly claimed amount for the following reasons. Pays et al. disclose measuring hardness or tack of the wax (¶ [0162]) and suggest a range amount to provide a desired tackiness (¶ [0185]). The adding of clay as a lipophilic gelling agent component which would contribute to the structure of the base composition (¶ [0005], [0218]) to suggest ease of wear (whether applying or removing the makeup).
Regarding the recitation of “A method of improving removal properties from eyebrows and/or eyelashes of a water-in-oil emulsion” is an intended use in the claim preamble. MPEP 2111.02(II) states, “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020).” The preamble merely recites the intended use or purpose of the claim. All of the limitations in the body of the claim are fully and intrinsically taught in the prior art because as these claims are intended use claims and a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art is capable of performing the intended use, then it meets the claim. Pays et al. teach the components and therefore it is obvious that the capability of performing the intended use would have been met. MPEP 2114(I.) states that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus.
Response to Arguments
Applicant' s arguments with respect to claim(s) 1-14 and 18-23 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Claims 1-14, 18-21 and 24-25 are rejected; no claims are currently allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Karen Ketcham whose telephone number is (571) 270-5896. The examiner can normally be reached 900-500 ET.
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/Karen A Ketcham/Examiner, Art Unit 1614
/ALI SOROUSH/Supervisory Patent Examiner, Art Unit 1614
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